WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBC Universal, Inc. v. XC2, Gary Lam
Case No. D2008-0962
1. The Parties
The Complainant is NBC Universal, Inc., New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is XC2, Gary Lam, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed Domain Name <nbchouston.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2008. On June 27, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 27, 2008, Moniker Online Services, LLC 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on August 4, 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
As stated in the Complaint, the Complainant is a well-known U.S. media and entertainment company engaged in the development, production, and marketing of entertainment, news, and information which is broadcast to a global audience. It owns and operates a portfolio of news and entertainment networks, a motion picture company, television production operations, a television stations group, theme parks and websites, including “www.nbc.com” and “www.msnbc.com” (the latter co-owned by the Complainant and the Microsoft Corporation).
Over the past sixty years, the Complainant's network, NBC, has produced and broadcasted many well-known and often highly-rated television series in the United States of America. It is also regarded as one of the leading broadcast news providers in the United States of America. As a result, the NBC television network has become well-known and is commonly referred to by consumers and the trade as simply NBC.
The Complainant owns numerous trademark registrations in the United States of America for the NBC mark dating back to as early as 1956. It attached to the Complaint a list of such registrations, including Registration No. 619,641 in Class 38, 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. The NBC trademark is also registered in more than sixty-five countries and representative examples of such registrations for the NBC mark were also annexed to the Complaint.
The Complainant also uses the name and mark NBC as part of its corporate name and mark NBC UNIVERSAL and it owns trademark registrations and applications for the NBC UNIVERSAL mark worldwide. Representative examples of these were also annexed to the Complaint.
The Complainant also owns (through its parent company General Electric Company) and uses the domain names <nbc.com>, <nbcuniversal.com> and <nbcuni.com> to deliver information concerning its networks, services and the programs featured on its networks. It was noted that the “www.nbc.com” website is currently among the top 1,000 most-visited websites on the Internet.
The Complainant also uses the NBC name and mark in connection with various US city names in order to identify its local television stations in those cities.
In connection with such local television stations, the Complainant also owns and/or uses a number of domain names that consist of the NBC name and mark in connection with a US city name.
5. Parties' Contentions
The Complainant contends that due to the excellence of its programming and services and “the long use, extensive promotion, advertising and unsolicited publicity relating to the NBC trademark and the NBC television network, the NBC trademark has established an invaluable reputation and has achieved enormous goodwill and secondary meaning in the United States and throughout the world.” It noted in this regard that the NBC mark has been ranked in the top 500 brands overall, across all industries.
The Respondent is alleged to be a known cybersquatter with a pattern of registering as domain names the trade names and marks, or variations thereof, of third parties. It points out that the Respondent has been found to have registered and used domain names in bad faith by numerous panels, including: See, e.g., Patti LuPone v. XC2/ Moniker Online Services LLC, WIPO Case No. D2008-0450; First SBF Holding, Inc. v. XC2, WIPO Case No. D2008-0409; Deere & Company v. XC2 (Moniker Privacy Services), WIPO Case No. D2007-1805; Scandic Hotels AB v. xc2, WIPO Case No. D2007-0810; Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811; The Belo Company, Belo Investments II, Belo Corp. v. XC2 / Internet Coordinator, WIPO Case No. D2006-0790; Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896; Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO Case No. D2003-0944.
It argues further that many of the UDRP decisions involving the Respondent have specifically discussed its bad faith registration of domain names containing the trademarks and trade names of third parties, or variations thereof, and Respondent's use of those domain names to direct web traffic to web sites from which Respondent derives a financial benefit.
The Domain Name Is Confusingly Similar To Complainant's Mark
With respect to this issue, the Complainant asserts that the Respondent's Domain Name is identical to and confusingly similar with Complainant's well-known NBC name and mark, because it incorporates the NBC name and mark. The addition of the city name “Houston” is said to be of no import. Numerous UDRP panels have held that the mere addition of a geographic indication to a well-known mark adds nothing distinctive and does not change the domain name from being confusingly similar to the trademark at issue. Accordingly, confusing similarity is to be presumed.
In any case, given the “unique character and worldwide renown” of the NBC mark, as well as Complainant's use of this mark in combination with geographic identifiers to describe its regional affiliates, there can be no doubt that consumers on seeing the Domain Name will reasonably believe that the Domain Name is related to the Complainant. Moreover, consumers who search the Internet for the Complainant by using the Complainant's NBC name and/or mark, and the associated city name - Houston, may be directed to Respondent's Domain Name, thereby creating a likelihood of confusion.
The Registrant Has No Legitimate Interest In The Domain Name
With respect to whether the Respondent has any legitimate interest in the Domain Name, it is argued that the Respondent cannot demonstrate or establish any legitimate interest because where, as here, a complainant's mark is so well known and recognized, there can be no legitimate use by the Respondent. Moreover, even if – hypothetically – the Respondent were unaware of the Complainant's rights in the NBC mark, it is Respondent's responsibility to determine whether its Domain Name registration infringes or violates another party's rights. In this regard, it is asserted, a basic search of the online USPTO trademark database would have revealed the Complainant to be the record owner of numerous registrations for the NBC and an Internet search would have quickly revealed the Complainant's extensive use of the NBC mark.
It is asserted further that because the Complainant's adoption and extensive use of the NBC mark long predates the first use of the Domain Name, it is the Respondent's burden to establish its rights or legitimate interest in the Domain Name. This cannot be done here. There is no relationship between the parties 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 mark and the 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, it is argued, the Respondent has registered and is using the Domain Name solely for commercial gain. This is apparent when an Internet user types the Domain Name into a browser and is then connected to a search engine and linking portal where a variety of “popup” and/or “popunder” advertising appears. The portal displays a number of links offering such services as television and news channel information, regional events and entities, credit and consumer information, dating and travel services, etc. Moreover, on the landing page found at the Domain Name, there are links featuring Complainant's NBC mark. However, rather than linking to a legitimate website of the Complainant, the web pages accessed from these links offer and/or advertise additional links to goods and services unrelated or competitive to the Complainant or the Complainant's products or services.
The Complainant expresses its belief that the Respondent derives a financial benefit from the web traffic diverted through the Domain Name and from the “popup” or “popunder” advertising that is displayed in connection with the Domain Name.
In view of the extensive use and notoriety of the Complainant's NBC mark, and the fact that the Respondent has no rights in it, the Complainant reasonably believes that the Respondent has registered and is using the Domain Name not for any legitimate noncommercial or fair-use purpose, but rather to profit from the web traffic generated through the Domain Name. Such use does not constitute a legitimate, bona fide offer of goods or services.
The Registrant Registered And Is Using The Domain Name In Bad Faith
It is contended in respect of this issue that the Respondent's bad faith registration and use is established by the fact that the Domain Name completely incorporates the Complainant's NBC mark and was acquired long after this mark became famous. Moreover, it is using the Domain Name to divert web traffic to a linking portal for profit. This use of the Complainant's mark to advertise commercial websites and deliver advertisements that are unrelated to the Complainant is not a use in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name.
It is asserted further that the Respondent's bad faith is demonstrated by its use of privacy services to shield its contact information from the public, and from potentially aggrieved trademark holders. While in some instances there may be legitimate reasons for a registrant to conceal its contact information, where, as here, the Domain Name at issue includes a famous mark owned by another party, it is evident that the Respondent attempting to hide from potential complainants.
Based on all of the above, it is submitted that the Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest in the NBC mark, as evidenced by its extensive use of the mark in the United States of America and throughout the world for many years, but also that the Respondent's sole interest in the Domain Name is to profit from it. Accordingly, the Complainant considers that it is entitled to the remedy sought.
The Respondent did not reply to the Complainant's contentions.
6 Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested Domain Name, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the present case, the Panel is of the view that the record contains abundant evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
The Domain Name <nbchouston.com> is virtually identical to the Complainant's NBC mark. As numerous courts and UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered trademark. The addition of a geographic identifier does not change this finding.
There is no question that the Complainant has met the first requirement of the Policy.
The disputed Domain Name is thus confusingly similar to a mark in which the Complainant has rights. The Complainant has plainly fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
There is no evidence of the Respondent's use 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. The Respondent registered and began using the Domain Name long after the Complainant's mark had become well known.
The Respondent has no relationship with or authorization by the Complainant to use the NBC mark, to appropriate the NBC Domain Name, or to otherwise associate itself with the Complainant. It is not otherwise affiliated with the Complainant nor its mark in any manner. It has not filed any applications for registration of the mark in any trademark offices or jurisdictions worldwide.
The disputed Domain Name is evidently not the Respondent's name, nor is there any evidence that the Respondent is commonly known by that name.
Nor is the Respondent making a legitimate non-commercial or fair use of the disputed Domain Name.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the Domain Name at issue has been registered and is being used in bad faith.
Because the Respondent uses the Complainant's NBC mark to attract consumers looking for its products and services to the Respondent's web site, its use of this Domain Name is likely to lead consumer confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's site and/or goods and services advertised on the site or accessible though it and of the links provided thereon.
The Panel finds that this is a patent case of cybersquatting. The Respondent has intentionally, and for commercial gain, registered and is using the Complainant's NBC mark in the Domain Name <nbchouston.com> to attract Internet users to its website for purpose of providing links to third party websites and hosting advertisements of third parties. It has also intentionally, and for commercial gain, registered and is using the Complainant's mark in the Domain Name to attract Internet users to its website for purpose of providing links to third party websites and hosting advertisements of third parties. It is acting in bad faith.
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, <nbchouston.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Date: August 18, 2008