WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBC Universal Inc. v. Mike Willis
Case No. D2008-1093
1. The Parties
Complainant is NBC Universal Inc., New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Mike Willis, Alpharetta, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <snldigitalshort.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2008. On July 21, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On July 21, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 28, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008.
On various dates during the course of the proceedings Respondent expressed the intention to transfer the disputed domain name to Complainant. Center accordingly advised the parties to consider suspending the proceedings in light of Respondent’s apparent willingness to transfer the disputed domain name. By email communication of August 27, 2008, Complainant informed the Center that Respondent had failed to meet Complainant’s terms for purposes of effectuating the transfer and requested that the Center proceed with the appointment of the Panel, but would however consider suspending the proceedings in the event Respondent was willing to meet the terms of transfer.
Respondent did not submit a formal Response. Accordingly, the Center notified Respondent’s default on August 26, 2008.
The Center appointed Gary J. Nelson as the sole panelist in this matter on September 5, 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
Complainant is the owner of a United States Trademark Registration for SNL, issued on July 17, 2007, filed on January 2, 2007. Complainant is the owner of an International Registration for SNL, issued on February 7, 2007.
Complainant appears to have been using the SNL trademark since 1998. Complainant appears to have been using the SNL DIGITAL SHORT and SNL DIGITAL SHORTS trademarks since December 2005.
Respondent appears to have registered the <snldigitalshort.com> domain name on March 6, 2006.
Respondent has expressed a willingness to transfer ownership of the <snldigitalshort.com> domain name to Complainant.
5. Parties’ Contentions
Complainant has made the following allegations:
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. Among its other entertainment activities, Complainant produces television programming and operates the well-known NBC television network which has been operating since the 1940s.
Since 1975, Complainant has produced and broadcasted the television show Saturday Night Live, a weekly late night 90 minute variety show featuring sketch comedy and musical performances, and is one of the longest running network programs in American television history.
Since at least as early as 1998, Saturday Night Live has been commonly known as SNL to the trade and consumers worldwide. Third-parties routinely refer to Saturday Night Live as SNL. Complainant advertises its Saturday Night Live program as SNL.
Complainant owns United States Trademark Registration No. 3,264,238 for SNL with an alleged date of first use at least as early as 1998. Complainant also owns an International Trademark Registration with coverage in the European Union for the mark SNL.
In late 2005, Complainant began including short, pre-taped digital video segments in many episodes of Saturday Night Live. These segments were collectively referred to as SNL Digital Shorts, and individually as a SNL Digital Short. The SNL Digital Shorts are widely available for viewing on the Internet.
Respondent did not formally respond to the filing of Complainant’s UDRP Complaint and to the contentions contained in the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs 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.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of a United States Trademark Registration for SNL issued on July 17, 2007, and an International Trademark Registration granting trademark rights in SNL in the European Union as of February 7, 2007. These dates are subsequent to the date Respondent appears to have registered the disputed <snldigitalshort.com> domain name. However, the registration of a domain name before a complainant acquires trademark rights in the name does not prevent a finding of identity or confusing similarity under the first element. See WIPO Overview of Panel Views on Selected UDRP Questions, 1.4
In any case, Complainant has established common law trademark rights in SNL prior to the date Respondent registered the <snldigitalshort.com> domain name.
A common law mark is established when a complainant’s goods or services become distinctive through the acquisition of secondary meaning. In this case, evidence of record proves that Complainant established secondary meaning in SNL through its extensive use and promotion of this mark beginning at least as early as 1998. See Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168 (“On account of long and substantial use of the said name (<keppelbank.com>) in connection with its banking business, it has acquired rights under the common law”).
The Panel concludes that Complainant established common law trademark rights in SNL well prior to the date Respondent registered the <snldigitalshort.com> domain name (i.e., March 6, 2006).
Likewise, evidence of record proves that Complainant established secondary meaning in SNL DIGITAL SHORT and SNL DIGITAL SHORTS at least as early as December 2005, again, a date prior to the date Respondent registered the <snldigitalshort.com> domain name.
The Panel finds that the disputed domain name, <snldigitalshort.com> is identical to Complainant’s SNL DIGITAL SHORT trademark, and is confusingly similar to Complainant’s SNL DIGITAL SHORTS trademark. See Cream Pie Club v. Brittany Halford, Case No. FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an “s” to the end of the Complainant’s mark does not prevent the likelihood of confusion caused by the use of the remaining identical mark”).
The Panel also finds that the disputed domain name, <snldigitalshort.com> is confusingly similar to Complainant’s SNL trademark. The addition of an ordinary generic phrase such as “digital short” is not sufficient to over come the confusing similarity created by Respondent’s adoption of Complainant’s SNL trademark , nor is the use of a generic top-level domain name such as “.com”. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”).
Accordingly, the Panel finds the <snldigitalshort.com> domain name to be confusingly similar to Complainant’s established SNL, SNL DIGITAL SHORT, and SNL DIGITAL SHORTS trademarks.
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the disputed domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the disputed domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <snldigitalshort.com> domain name, or that he is commonly known by any name consisting of, or incorporating the names, “Snl”, or “Digital” or “Shorts” or any combination of these three terms. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the disputed domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <snldigitalshort.com> domain name predates Complainant’s rights in its SNL, SNL DIGITAL SHORT, or SNL DIGITAL SHORTS trademarks.
Furthermore, Respondent has indicated his willingness to transfer ownership of the <snldigitalshort.com> domain name to Complainant. The Panel construes this offer by Respondent as further evidence that Respondent does not have any right or legitimate interest in the disputed domain name.
Complainant has proven the requirement of Policy, paragraph 4(a)(ii) in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Respondent is using Complainant’s SNL DIGITAL SHORT trademark to attract Internet users to a website associated with the <snldigitalshort.com> domain name. This website features click-through opportunities from which Respondent is likely generating revenue. Use of another’s trademark for this type of commercial gain by Respondent is sufficient evidence of bad faith registration and use. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 (“...the Respondent’s commercial use of the Domain Name to increase Internet traffic directed at a search engine...is evidence of bad faith under Policy, para. 4(b)(iv)”); see also Axel Springer AG v. AUTOBILD.COM, WIPO Case No. D2005-0554 (the deliberate redirection of Internet users to a commercial directory is a form of use that may allow Respondent to generate income through an inappropriate use of another’s trademark and is evidence of bad faith).
Respondent is also using Complainant’s SNL DIGITAL SHORT trademark to attract Internet users to a website that leads the Internet users to other websites competing directly or indirectly with Complainant. In addition Respondent’s website features click-through opportunities to products that compete directly or indirectly with products sold by Complainant under its SNL, SNL DIGITAL SHORT and SNL DIGITAL SHORTS trademarks. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
Further, the Panel finds that Respondent likely registered the <snldigitalshort.com> domain name with full knowledge of Complainant’s rights in the SNL, SNL DIGITAL SHORT and SNL DIGITAL SHORTS trademarks. Respondent’s awareness of Complainant’s SNL trademark may be inferred because the mark became famous and/or well-known prior to Respondent’s registration of the disputed domain name. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No.D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <snldigitalshort.com>, be transferred to Complainant.
Gary J. Nelson
Date: September 19, 2008