The Complainant is Cox Communications, Inc., Atlanta, Georgia, United States of America, of United States of America, represented by Dow Lohnes, PLLC, United States of America.
The Respondent is COX Media Incorporated Venezuela, Maracaibo, Zulia, Bolivarian Republic of Venezuela.
The disputed domain name <coxmedia.net> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. On May 8, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 8, 2009, GoDaddy.com, 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” 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 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 5, 2009.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 11, 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.
The Complainant is an advertising sales organization that provides cable television advertising planning and buying services, research analysis, professional commercial production and exclusive promotions to advertising agencies and business owners in the United States.
The Complainant, Cox Communications, has three different branches: Cox Business, which provides business level video, voice and Internet services, Cox Media for advertising sales and Travel Media, Inc, which is in charge of the Travel Channel.
According to the annexes submitted with the Complaint, the Complainant states that it is the owner of the following trademarks, for which it has provided copies:
- COX + Logo, United States federal registration n°2,005,968, registered on October 8, 1996 and covering services in classes 38 and 41;
- COX + Logo, United States federal registration n°2,007,780, registered on October 15, 1996 and covering services in classes 38 and 41;
- COX + Logo, United States federal registration n°2,911,456, registered on December 14, 2004 and covering services in class 38;
- COX MEDIA, United States federal registration n°2,797,166, registered on December 23, 2003 and covering services in class 35;
- COX MEDIA, United States federal registration n°2,804,429, registered on January 13, 2004 and covering services in class 35.
The Complainant has also registered the domain name <coxmedia.com>.
The disputed domain name <coxmedia.net> was registered on June 22, 2005 with GoDaddy.com, Inc and is currently being held by the Respondent.
The Respondent has used the domain name at issue to direct Internet users to a website displaying information on the company Cox Media Group Latino America S.A, which is very likely to be related to the Respondent's company.
The Complainant has put forth the following legal and factual contentions.
First of all, the Complainant asserts that the Respondent is not a licensee, nor is he otherwise authorized to use any of the Complainant's trademarks.
The domain name currently displays a web page for the “Cox Media Group”. The website is under construction but there is a description of the company's services in Spanish. According to the Complainant's translation, the services offered by the Respondent are very similar to the Complainant's.
On April 2, 2009, the Complainant sent a cease-and-desist letter to the Respondent which remained unanswered. However, the content of the domain name slightly changed after the Respondent received the letter. In fact, in the Complainant's opinion, the logo displayed on the website was very similar, if not almost identical, to its COX MEDIA trademark. After the receipt of the cease-and-desist letter the logo was removed from the website and replaced by another closely similar to the Complainant's logo and the Respondent still continued to use the word mark COX MEDIA.
In addition the Respondent put a disclaimer on the bottom of its web page indicating that it is not affiliated with the Complainant.
The Complainant considers that the Respondent has never made any use or demonstrable preparations to use the domain name or any name corresponding to the domain name in connection with bona fide offering of goods or services.
The Complainant highlights also the fact that the Respondent has not been commonly known by the domain name prior to the time of registration.
Furthermore, the Complainant asserts that the Respondent has not made any legitimate noncommercial or fair use of the domain name and that its aim was to intentionally divert Internet users to the its website.
As for the registration in bad faith, the Complainants puts forward the argument that, given the notoriety that its mark enjoys, the Respondent deliberately chose to register the disputed domain name having full knowledge of the Complainant and of its services. Further evidence is provided by the fact that the Respondent used a logo nearly identical to the Complainant's which was very likely to create a risk of confusion in Internet users' minds.
Besides, the Complainant considers that the addition of the disclaimer on the website is not sufficient to avoid a finding of bad faith.
The Respondent did not reply to the Complainant's contentions and is therefore in default.
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
The Panel will first examine whether there is a confusing similarity between the Complainant's trademark and the domain name in dispute.
The domain name fully incorporates the Complainant's trademark COX MEDIA.
The Panel finds that the Complainant has provided sufficient evidence to support the fact that it has rights in the trademark COX MEDIA.
The domain name is plainly and simply identical to the Complainant's trademark COX MEDIA.
The only difference is the gTLD extension <.net>, but this should be disregarded as it has already been held several times by WIPO panelists, such an adjunction is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant's trademark (Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Accordingly the Panel is satisfied that the Complainant has proved the condition set out by paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel believes that there is no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark under any circumstance.
Furthermore several UDRP decisions have established that once the complainant has filed the complaint and made a prima facie case that the respondent lacks rights or legitimate interests, the burden is on the respondent to prove its rights or legitimate interests in the domain name (see Sinbar v. Forsyte Corporation, WIPO Case No. D2008-1667; Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited WIPO Case No. D2004-0753).
Because the Respondent's company name is apparently COX Media Incorporated Venezuela, it could reasonably be argued that the Respondent could have a legitimate interest in registering such domain name. However, in the Panel's opinion, if the Respondent was running an actual business in Venezuela, surely it would have replied to the Complainant and would have provided the Panel with comprehensive proof of reputation, good will and trademark registrations.
The Panel wondered whether the company COX Media Incorporated Venezuela really exists. The Complainant did not provide the Panel with any information regarding the Respondent. It is WIPO panel consensus view that the Panel may visit the website located at the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. Therefore, according to paragraph 10(a) of the Rules, the Panel took the initiative to independently obtain additional evidence from the Internet to clarify this matter (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038; Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014). The Panel first verified on the Venezuelan Trademark Office database online whether the trademarks COX or COX MEDIA were registered by the Respondent in Venezuela. Nothing could be found. Then the Panel carried out an online research in order to find some information of its presence and notoriety in Venezuela and Latin America. Again, no information was available, except from the website located at the disputed domain name. The Panel would like to point out that this research has been carried out within the given time and within the limits of what is available on the Internet.
Moreover, the website has been under construction for several months now and does not appear to be active. If the Respondent would have a legitimate interest it would not be kept in this way.
Besides, as the Respondent is in default, the Panel is of the opinion that it has no rights or legitimate interests in said domain name.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
Many decisions have stated that both conditions are cumulative (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001). Thus, the Complainant must clearly show that: (a) the domain name was registered by the Respondent in bad faith and, (b) the Domain Name has been used by the Respondent in bad faith.
The Panel would like to point out that both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (See paragraph 2), it is established that when a party registers a domain name, it has an onus of warranty to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party.
The disputed domain name is an exact reproduction of the Complainant's registered trademark COX MEDIA.
The Complainant provided screenshots of the domain name in dispute, but as it is still active the Panel has been able to verify by himself the authenticity of these screenshots. However, the Panel was not able to recover any information concerning the previous website on “www.archive.org”, and has to base its decision exclusively on the screenshots submitted by the Complainant. The Panel considers that it is not generally its place to explore or cross-examine in depth the veracity of the evidence presented, and that it should limit itself to making an evidentiary assessment on balance.
The fact that the Respondent's website displayed a logo almost identical to the Complainant's is a proof that the Respondent knew about the Complainant's trademarks before it registered the domain name. Therefore, even though the Complainant did not provide the Panel with evidence of its notoriety in Venezuela, it seems reasonable to assess that the Respondent registered the domain name in bad faith.
All the more so given the fact that, according to the evidence submitted by the Complainant, the field of activity of the Respondent is the same as the Complainant's.
In order to meet the requirements of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is also necessary to prove that the domain name is used in bad faith.
The disputed domain name leads to the website of the Cox Media Group LatinoAmerica S.A. According to the evidence provided by the Complainant, before the cease-and-desist letter was sent to the Respondent, the website displayed a webpage with a blatant imitation of the Complainant's trademark and a description of the company in Spanish which seemed very similar to the Complainant's activities.
In view of the above, the Panel believes that these facts constitute an overwhelming proof that the Respondent was well aware of the Complainant's activities and trademarks.
The Panel therefore considers that the disputed domain name has been registered in order to divert Internet users searching for the Complainant's marks and services to the Respondent's website and to free ride on its reputation.
Once the Respondent received the cease-and-desist letter the logo was replaced with a different one, but still very similar and a disclaimer has been added at the bottom of the page.
A number of previous UDRP decisions have dealt with disclaimers. In the ISL Worldwide and The Federal Internationale de Football Association .v. Western States Ticket Service, WIPO Case No. D2001-0070, the panel stated: “The Panel does not find the Respondent's Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place”.
Therefore, in the Panel's opinion, the disclaimer does not hinder a finding of bad faith.
As a result, the Panel finds that the domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) and 4(b)(iv) of the Policy has been met 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 <coxmedia.net> be transferred to the Complainant.
Dated: June 25, 2009