The Complainant is The Weather Channel, Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Stockton, LLP, United States.
The Respondent is Versata Software, Inc., Versata Hostmaster, of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <weatherchannelkids.com> (“the Domain Name”) is registered with Red Register, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2009. On April 27, 2009, the Center transmitted by email to Red Register, Inc. a request for registrar verification in connection with the Domain Name. On April 29, 2009, Red Register, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 3, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on June 9, 2009. 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.
In the absence of a Response, the Panel has confirmed that the communications records show that the Center has discharged its responsibility to notify the Complaint to the Respondent.
The following uncontested facts are taken from the Complaint. The Complainant is an American Corporation which provides weather information. Since 1982, when it established a cable television network devoted entirely to weather, the Complainant has expanded its operations across several media to bring weather news to viewers and users. At the end of 2006, the Complainant's television network reached nearly 90 million households.
Since 1982, the Complainant has operated under the mark THE WEATHER CHANNEL. Over the years since 1982, it has spent many millions of dollars advertising and promoting its products and services under that mark.
A related company of the Complainant operates a website at “www.weather.com”, and another website, specifically designed for children and their parents and teachers, at “www.theweatherchannelkids.com”. The Complainant says that it has sold a variety of merchandise featuring the expression “The Weather Channel Kids”. The domain name <theweatherchannelkids.com> was created on September 24, 2007, and the website at that domain name was launched in October of 2007.
The Complainant has an international reach through its online activities. It provides weather information for cities around the world, and the Complainant group operates language-specific websites for various countries, including the United Kingdom, France, and Germany.
From relatively early in its operations, the Complainant group's cable television channel appears to have provided features designed for children, and a page from the website at “www.weather.com” dated July 31, 2002 provided click-on links “Education” and “Weather Classroom”. A “weatherclassrom.com” domain name was registered by the Complainant group in December 2003).
The Complainant is the registered proprietor of a device mark in the United States which consists prominently of the words “The Weather Channel”. Those words appear in white lettering against a rectangular black background. The mark has been registered on the principal register maintained by the United States Patent & Trademark Office (“USPTO”), with effect from November 7, 2005, and covers meteorological forecasting services in international class 42. The USPTO database extract produced by the Complainant refers to a first use in commerce date of August 2005.
In addition, the Complainant has produced USPTO database extracts relating to various other registrations of a word mark “The Weather Channel”, but the names and addresses of the listed registered proprietors do not seem to coincide precisely with the Complainant's name and address as shown in the Complaint.
The Complainant has produced a schedule showing particulars of other pending applications and registrations of “Weather Channel” marks around the world, including one mark (said to be registered in the United Kingdom) TWC THE WEATHER CHANNEL. However, the Complainant has not provided proof of that registration.
The Domain Name was registered on July 31, 2007. As at April 2009, the Domain Name resolved to a website containing links to pornography or malicious spyware sites. The Complainant has produced a printout of a Google search which appeared to show that the Domain Name resolved to a website at “www.pornosbest.com”. The Google search carried a warning “visiting this website may harm your computer!”, and referred to “harmful software”. The Complainant appears to have been unable to access any website at the Domain Name.
The Domain Name has also been pointed to a website called “porntube”, featuring pornographic material.
The Respondent has no relationship with the Complainant, and the Complainant has not authorised the Respondent to use the Domain Name, or to use the Complainant's THE WEATHER CHANNEL mark.
There have been instances of actual confusion, where schools seeking to access the Complainant's <theweatherchannelkids.com> website have arrived at the website at the Domain Name.
There have been other administrative proceedings in which the Respondent has been found to have registered domain names in bad faith – Christian Dior Couture v. Versata Software Inc., WIPO Case No. D2009-0102; Heald College LLC v. Versata Software Inc., WIPO Case No. D2008-1875; Enterprise Rent-A-Car Company v. Versata Software Inc. c/o Versata Hostmaster, NAF Claim No. 1072909; and Cambridge Pavers Inc.. v. Versata Software Inc. c/o Versata Hostmaster, NAF Claim No. 1112558.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's famous, federally registered THE WEATHER CHANNEL mark. The omission of the word “the”, and the addition of the generic word “kids”, in the Domain Name, are insufficient to avoid a finding of confusing similarity. That confusing similarity is evidenced by the instances of actual confusion which have occurred.
2. The Respondent has no right or legitimate interest in respect of the Domain Name, having regard to the following facts:
(i) The Complainant's first use and registration of the mark THE WEATHER CHANNEL long predate any use the Respondent may have made of the Domain Name, and the Respondent had constructive knowledge of the Complainant's prior use and trademark rights in its THE WEATHER CHANNEL mark.
(ii) The Respondent has not been commonly known by the Domain Name, nor has it done business under the Domain Name or under the name “Weather Channel Kids”.
(iii) The Respondent's use of the Domain Name has not been in connection with a bona fide attempt to offer goods or services to the public.
(iv) The Respondent has no relationship with or authorization from the Complainant to use the Domain Name.
(v) The Respondent has been using the Domain Name in an attempt to tarnish and trade off the goodwill and reputation associated with the Complainant's THE WEATHER CHANNEL mark. Use of a disputed domain name to provide links to pornographic websites has been held to tarnish a complainant's mark and reputation (see Six Continents Hotels Inc. v. Seweryn Nowak, supra, and Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502).
(vi) The Respondent's use of the Domain Name has not been a legitimate, noncommercial speech use, as no attempt has been made to communicate the Domain Name.
3. The Domain Name was registered and is being used in bad faith, having regard to the following facts:
(i) Use of a famous mark for pornographic purposes is evidence of bad faith (Six Continents Hotels Inc. v Seweryn Nowak, supra; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; and Bass Hotels & Resorts Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568).
(ii) The Respondent has tarnished the Complainant's famous mark THE WEATHER CHANNEL, by associating it with pornographic materials (citing V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. 2005-0992).
(iii) The Respondent's current activities, which involves suspicious malware or spyware, are “intentionally disruptive” to the Complainant (citing 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043, and Edmunds.com Inc. v. Tripple E Holdings Limited, WIPO Case No. D2006-1095 – “… this tactic was infamously used by John Zuccarini, who redirected domains targeting children to pornographic websites …”).
(iv) The Respondent is a repeat offender, having been held in the past to have registered disputed domain names confusingly similar to others' trade marks, in bad faith.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(ii) That the disputed 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Panel is satisfied that the Complainant has proved this part of its Complaint. The Complainant has sufficiently proved that it is the proprietor of a United States-registered device mark which prominently includes the words “The Weather Channel”, and those words form the dominant part of that mark.
The Domain Name differs from that mark only in the omission of the word “the” and the addition of the word “kids” (the generic suffix “.com” is not taken into account in the comparison). The presence or absence of the word “the” does not affect the idea, or impression, created by the Complainant's mark (that of a radio or television channel featuring news or information about the weather), and the Panel accepts the Complainant's submission that the addition of the generic expression “kids” is not sufficient to remove the confusing similarity caused by the use of the words “weather channel” in the Domain Name.
The Panel, therefore, accepts that the Domain Name is confusingly similar to the Complainant's THE WEATHER CHANNEL device mark.
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 disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, 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 a 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 its THE WEATHER CHANNEL device mark, or any expression confusingly similar thereto, whether in a domain name or otherwise. There is no evidence that the Respondent may have been commonly known by the Domain Name, and accordingly no basis in the evidence for a right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor is there any suggestion in the evidence that the Respondent may have used the Domain Name for some fair or legitimate noncommercial use, such as might constitute a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no right or legitimate interest”, so the evidentiary burden on this part of the Complaint falls to the Respondent. The Respondent has failed to file any Response, and has therefore failed to discharge that evidentiary burden. The Panel accordingly finds on the evidence produced, that the Respondent has no right or legitimate interest in respect of the Domain Name.
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 [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
In the absence of any Response, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its mark when the Respondent registered the Domain Name. First, the Complainant's THE WEATHER CHANNEL mark appears to have achieved close to worldwide recognition, and it would have been particularly well known in the Complainant's home area in the southeast of the United States. The Respondent is apparently based nearby in the Caribbean, and it registered the Domain Name through a registrar based in the United States. Secondly, the use of the expression “weather channel” in the Domain Name suggests that the Respondent was at the very least interested in television channels concerned with the weather. In those circumstances, it seems improbable that the Respondent would not have been aware of the Complainant.
The Respondent has offered no reason for its choice of the Domain Name, and there is no apparent connection between the three words which constitute the Domain Name and the use of the Domain Name for links to pornography websites. Furthermore, the evidence establishes that the Respondent has in the past registered domain names for the bad faith purpose of trading off trademark owners' goodwill in their marks.
In the absence of any explanation from the Respondent, the Panel finds that it is more likely than not that the Respondent chose the Domain Name because of its similarity to the Complainant's THE WEATHER CHANNEL trademark, and that the Respondent did so with a view to attracting Internet traffic looking for websites operated by or associated with the Complainant. The Respondent's use of the Domain Name as described in the Complaint appears to have been commercial in nature, and the circumstances described fall 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 website operated by the Respondent at the Domain Name, by creating a likelihood of confusion with the Complainant's THE WEATHER CHANNEL mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
In view of that finding, there is no need for the Panel to consider the other arguments advanced by the Complainant.
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 <weatherchannelkids.com> be transferred to the Complainant.
Dated: June 23, 2009