Complainant is Scripps Networks, LLC of Knoxville, Tennessee, United States of America, represented by Frost Brown Todd LLC, United States of America.
Respondent is Chief Architect, Inc. of Coeur d'Alene, Idaho, United States of America, internally represented.
The disputed domain name <hgtvsoftware.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2009. On May 12, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On that same date GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 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 Response was filed with the Center on June 4, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 12, 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.
By an email dated June 10, 2009, Complainant requested the Panel to accept and consider a Supplemental Filing. Neither the Policy nor the Rules, provide for Supplemental Filings by either party except in a few narrow instances not applicable here. The Panel has the sole discretion to determine the admissibility of the Supplemental Filing. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (denying a supplemental submission because, among other things, it did not sufficiently identify the alleged new facts and misstatements to satisfy the panel that they were indeed new facts or misstatements which required a reply).
Applying these principles to the present case, the Panel notes Complainant's reason for filing the Supplemental Submission: “because the Complainant could not have anticipated that Respondent would claim it has a legitimate interest in the HGTVSOFTWARE.COM domain by means of a prior contractual relationship with a third party to Complainant.” It appears to the Panel from reading the Complaint that Complainant did anticipate Respondent's argument and sufficiently addressed it. Thus, the Panel has not considered the Supplemental Filing.
For over 10 years, Complainant (including predecessors, partners, licensees, subsidiaries, related companies) has created products and services related to the home and garden under the HGTV mark. Those activities have included cable television shows and information online at its website “www.hgtv.com”. The HGTV television network debuted in 1994 and is now distributed to more than ninety-five million households. The website activities began at least as early as 1996 (including Complainant's ownership of the <hgtv.com> domain) and the website averages more than five million unique visitors per month. By way of Complainant's website, customers can watch video clips, order software products, read articles, contribute to discussions about the home and garden on message boards, and access newsletter subscription services.
Complainant owns many trademarks that are registered with the U.S. Patent and Trademark Office incorporating the HGTV mark including: HGTV, Registration Nos. 2,205,702, 2,405,267, 2,378,758; HGTV PRO, Registration No. 3,336,010; and HGTV ON DEMAND Registration No. 2,854,958. Registration numbers ‘702, ‘267 and ‘758 are incontestable.
In September 2008, Complainant learned that Respondent was displaying the HGTV logo on its “www.homedesignsoftware.com” website in connection with Respondent's offering of a home design software product. Complainant sent Respondent a cease and desist letter on October 7, 2008. Subsequently Complainant became aware that Respondent registered the Domain Name (<hgtvsoftware.com>). Respondent was using the Domain Name as a placeholder containing links to third-party websites advertised as “HGTV” sites (e.g., HGTV Bathroom Design, HGTV Dream Home 2008). Complainant sent Respondent a cease and desist letter on November 6, 2008 relating to this use demanding, among other things, that Respondent assign the Domain Name to it. Respondent did not assign the Domain Name but, rather, it deactivated the Domain Name presumably by changing servers. Complainant sent a third letter to Respondent on November 24, 2008 restating its demands, among other things, with regard to Respondent's use of the Domain Name. Respondent continues to passively hold the Domain Name.
Complainant states that the Domain Name incorporates the HGTV mark in its entirety, adding only the generic word “software.” Complainant also claims Respondent has no rights or legitimate interests in respect of the Domain Name because (1) it is not Complainant's licensee or otherwise affiliated with Complainant; (2) Respondent's name does not include “HGTV”; and (3) Respondent is not under a contractual relationship with Complainant to distribute “HGTV” Software and not partaking in the actual offering of goods and services in connection with the Domain Name. Lastly, Complainant claims Respondent registered and is using the Domain Name in bad faith including by: (1) registering the Domain Name (that incorporates a well-known mark) to misdirect traffic and therefore capitalize on the recognition of the HGTV mark by those seeking products and services related to the home and garden; and (2) passively holding a Domain Name based on a well-known mark instead of assigning it to the rightful owner after multiple requests.
Respondent contends in response: (1) Complainant has no trademark rights in the Domain Name; (2) because Complainant has no trademark rights in, or is not known as, the Domain Name, Respondent is the one with rights and legitimate interests in the Domain Name; (3) it has a legitimate right to display information pertaining to “hgtv” on its non-disputed website “www.homedesignersoftware.com” because it contracted with the producer of the HGTV show “Fun Shui” to design software renderings for use in the show”; (4) because the Complainant does not exclusively use the Domain Name or is known by it, Respondent ipso facto has rights and a legitimate interest in it; and (5) there is no bad faith registration and use – Respondent did not register the Domain Name to sell it to Complainant; Complainant has committed bad faith by using Respondent's name to advertise a competing product.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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.
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
It is uncontroverted that Complainant has established rights in the HGTV mark based on both long-standing use as well as its U.S. trademark registrations for the HGTV mark. Likewise, Complainant has established rights in the domain name <hgtv.com> that incorporates the HTGV mark. Complainant's United States federal trademark registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Respondent argues that because Complainant has no trademark rights in the Domain Name (<hgtvsoftware.com>) its Complaint must fail. Respondent's argument turns this element of the Policy on its head. Complainant does not have the burden to show rights in the infringing domain name, only rights in the mark HGTV that Respondent has infringed by using it in the Domain Name. That Respondent added “software” to Complainant's HGTV mark in registering the Domain Name does not affect Complainant's rights in the HGTV mark, nor does it negate the confusing similarity between the HGTV mark and Domain Name (see below).
The next issue is whether, taken as a whole, <hgtvsoftware.com> is confusingly similar to Complainant's HGTV mark. The Panel determines that it is. See Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269 (holding <dolcehotels.com> is confusingly similar to DOLCE); The Boston Consulting Group, Inc. v. Rodney Thomas, WIPO Case No. D2005-0259 (holding <bostonconsults.com> is confusingly similar to THE BOSTON CONSULTING GROUP).
The Domain Name incorporates Complainant's HGTV mark in its entirety, adding only the generic or descriptive term “software”. Including that term does not negate the confusing similarity of the Domain Name with regard to Complainant's HGTV mark. On the contrary, adding the word “software” to Complainant's HGTV mark increases the confusing similarity because the term “software” describes some of Complainant's products it sells in connection with its HGTV marks (e.g., HGTV Home Design Software), for example, on its website at “www.hgtv.com”. Other panels have held that adding descriptive or generic wording to a mark satisfies paragraph 4(a)(i) of the Policy, requiring that a disputed domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant contends it has not licensed or otherwise authorized Respondent to use its HGTV mark or <hgtv.com>domain name for any purpose. Complainant also maintains Respondent is not affiliated or in a contractual relationship with it. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, 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; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is 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.
Respondent maintains that because Complainant does not have rights in the Domain Name and Respondent registered the Domain Name, it has rights and a legitimate interest in it. Once again, this reasoning is flawed and fails to comport with Respondent's burden under the Policy. Furthermore, the cases Respondent cites do not support its argument because they relate to domain name disputes involving generic terms rather than well-known registered trademarks like the HGTV mark. Lastly, Respondent suggests that it has a legitimate interest in the Domain Name because of some images it provided to a third party for use in conjunction with a program of Complainant. This has no relevance to Respondent's burden under this element of the Policy.
The Panel therefore holds that Complainant has established paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.
This list is not exclusive, however, and bad faith under the Policy may be predicated on other circumstances. See, e.g., Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668.
Respondent has registered a domain name that is confusingly similar to Complainant's HGTV mark, which Complainant used and registered with the U.S. Patent and Trademark Office well before Respondent registered the Domain Name. In fact, Respondent has provided the Panel with a “Letter of Agreement” evidencing that it knew of HGTV and Complainant's HGTV show back in 2006, well before it registered the Domain Name in 2008. The agreement was between Respondent and a third party (Pangolin Pictures) and states in part: “This letter is to confirm Chief Architecht's commitment to supply Pangolin Pictures with 3D graphics free of charge for the duration of the 13 part series, entitled “Fun Shui” for HGTV.” Respondent's internal representative (given as Scott Harris) signed the agreement on Respondent's behalf. He is also representing Respondent in this proceeding. Insofar as Respondent had actual knowledge of Complainant's well-known HGTV mark, it is difficult to conceive of any good faith reason for Respondent to register a domain name that incorporates the mark in its entirety and merely tack on a descriptive word that, if anything, could only further any confusion. Accordingly, the Panel finds Respondent registered the Domain Name in bad faith.
The Panel also finds that the evidence Complainant has provided is sufficient to satisfy Sections 4(b)(iii) and (iv) of the Policy even though the Domain Name currently does not resolve to an active website. Respondent first used the Domain Name as a placeholder containing links/sponsored listings to third-party websites providing home improvement products and services – Complainant's same field of business. The HGTV mark has become well known in the field of home improvement. That Respondent adopted Complainant's HGTV mark as its Domain Name, combined it with a descriptive term (“software”) that is only likely to further confusion, and linked the Domain Name to a page with sponsored links for home improvement products and services indicates that Respondent intended to create confusion with Complainant's trademark. Moreover, insofar as Respondent itself is in the home improvement business, Respondent's registration and use of the Domain Name also indicates Respondent registered it to disrupt the business of Complainant, a competitor.
Further evidence of bad faith use of the Domain Name is Respondent's reaction to Complainant's multiple communications (demand letters, phone call). Rather than responding to Complainant in any meaningful way or turning over the Domain Name, Respondent is passively holding it.
Respondent attempts to extricate itself from its bad faith registration and use of the Domain Name by arguing that “hgtv software” is a descriptive term that describes the process Respondent used to develop the software renderings for HGTV's Fun Shui program. The Panel has already rejected that HGTV is descriptive or generic based on the evidence made of record in this proceeding. Respondent also claims it did not register the Domain Name to sell it to Complainant, but admits offering the Domain Name at no charge to Complainant if it would “address” alleged trade-dress and trademark infringement issues – a separate dispute it appears to have with Complainant. Whatever beef Respondent may have with Complainant is irrelevant here. Respondent's acts in registering and using the Domain Name in the circumstances here make clear to the Panel Respondent's intent.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) 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 <hgtvsoftware.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: June 29, 2009