WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scripps Networks, LLC v. Rampe Purda/Privacy--Protect.org
Case No. D2010-1369
1. The Parties
The Complainant is Scripps Networks, LLC of Knoxville, Tennessee, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is Rampe Purda of Hailuoto, Finland; Privacy--Protect.org of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <lyrisscrippsnetworksnewsletters.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 13, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com a request for registrar verification in connection with the disputed domain name. On August 17, 2010, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 21, 2010. On August 17, 2010, the Center transmitted an email communication to the parties in both English and Finnish regarding the language of proceedings. On August 20, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint together with the amended 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 August 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on September 23, 2010. The Panel finds that it was properly constituted, and that the language of these proceedings should be English. 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.
Language of the Proceedings
The Complainant requested that the language of these proceedings should be English, notwithstanding the fact that the language of the registration agreement was Finnish, citing previous decisions involving the Respondent in the present proceedings, namely Hertz System, Inc. v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0636; U. S. Natural Resources, Inc v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0720, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, and L’Oréal v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0870. Generally, the Panel is of the view that the language of proceedings under the Policy should be the language of the domain name registration agreement. However, having been the Panel in the above mentioned cases, and having checked with the Finnish Population Register that nobody with either the name Rampe or Purda is currently registered as resident in Finland, having checked that neither Rampe or Purda appears on the Finnish Trade Register (which lists all trading entities in Finland), and having discovered that the Finnish address given for the Respondent is improbable as a trading address, the Panel doubts the existence of an individual/entity called Rampe Purda in Finland. Further, the Respondent did not exercise the option to take part in these proceedings, as in the previous cases mentioned above. In these circumstances, in the Panel’s opinion, to require the Complainant to incur the heavy expense of translation of the documents in this case into Finnish would be unduly onerous, and, accordingly decides that the language of these proceedings should be English.
4. Factual Background
The Complainant, its predecessors in interest, itself, its partners, and through its licensed affiliates subsidiaries and related companies (collectively “Scripps Networks”) has, over 15 years been engaged in cable television broadcasting services and is currently comprised of the following television networks: HGTV, Food Networks, DIY Network, Travel Channel, Cooking Channel and country music network Great American Country (GAC).
Since launching HGTV in 1994, Scripps Networks has become a leading developer of “lifestyle content” for television and the Internet, where on-air programming complements an array of broadband video, social media areas and e-commerce components on comparison websites that attract more than 20 million unique visitors per month. Beyond the television screen Scripps Networks brands have extended into magazines, retail products and live experiences.
Scripps Networks continues to expand its branding and its television audience each year. As an example, the HGTV television network viewing audience has grown exponentially and is currently distributed to more than 95 million households, making it one of the largest television networks in the world devoted to home and garden, as well as its related subjects. The “Food Network”, a network devoted to cooking and the culinary arts, has also greatly expanded and is currently distributed to more than 99 million households in the United States alone. The Scripps Networks brands, collectively, are available in 170 countries spread across the world, making it one of the largest “lifestyle content” providers in the world.
In addition, Scripps Networks also provides correlating content via the Internet. For example, HGTV provides “lifestyle content” relating to the home and garden, and its related subjects, via its website at “www.hgtv.com“, and has been doing so since 1996. Currently, this website averages more than 5 million unique visitors per month, and HGTV electronic newsletters offered through <hgtv.com> has millions of subscribers.
The Complainant expends tens of millions of United States dollars per annum in advertising, marketing and promotional materials with the Scripps Networks marks in connection with offering its television broadcasting and online services and products, and, since 1998, has owned and used the <scrippsnetworks.com> domain name. This website contains the history of Scripps Networks and its brands, details of upcoming programs, etc.
The Complainant has provided the Panel with evidence of its ownership of United States Federal trademark registration No. 2,344,722, of its trademark SCRIPPS NETWORKS, in respect of “cable television broadcasting services”, with the registration date of April 25, 2000, claiming use in commerce since 1998.
The disputed domain name was registered on September 11, 2009.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <lyrisscrippsnetworksnewsletters.com> is confusingly similar to its SCRIPPS NETWORKS trademark, incorporating this trademark in its entirety, only adding the term “lyris” at the beginning and the genetic word “newsletters” at the end. In this connection, the Complainant contends that if a domain name incorporates a mark in its entirety it is confusingly similar to that mark despite the addition of other words, and has drawn the attention the Panel’s attention to the decision in Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512, citing the decision in Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, in support of this proposition.
In connection with rights or legitimate interests, the Complainant states that, to the best of its knowledge, “lyris” has no meaning in the English language, and comments that, because of the Respondent’s use of a privacy shield, it cannot ascertain what meaning “lyris” may have to the Respondent, if any. Regardless of any particular meaning, the Complainant contends that the Respondent, having no authorization to use the SCRIPPS NETWORKS mark, and, not being a licensee of or otherwise currently affiliated with the Complainant, and not including the words “Scripps Networks” in its name, has no rights or legitimate interests in the domain name.
In connection with bad faith, the Complainant has drawn the Panel’s attention to the use of the disputed domain name, the effect of which may be to misdirect potential customers to third party websites that offer or promote competitive products and services. Also in connection with bad faith, the Complainant has referred the Panel to the previous cases in which the current Respondent was involved, namely Hertz System, Inc. v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0636; U. S. Natural Resources, Inc v. Rampe Purda/Privacy--Protect.org; WIPO Case No. D2010-0720, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 and L’Oréal v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0870. The Complainant comments: “In each of these dispute proceedings, it was found that the Respondent engaged in the same pattern of conduct as is the case herein – the use of a privacy shield, the registration of a domain name including a third party’s trademark and the use of “pay per click” advertising as web content associated with the domain name”, and invites the Panel, taking into account all of these factors and the Respondent’s pattern of abusive behavior, to hold that the Respondent’s registration and use of the disputed domain name to be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of the respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark (“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.
A. Identical or Confusingly Similar
In connection with identical or confusing similarity, the present case differs from the previous cases mentioned above involving the Respondent in the present case. In those previous cases the Respondent had taken the Complainant’s trademark and merely added a generic expression applicable or apposite to the Complainant’s business. In each case, the Panel found that this was not sufficient to escape a finding that the resultant domain name was confusingly similar to the Complainant’s mark. In the present case, the Respondent has taken the Complainant’s mark, and has added a generic word, “newsletters”, applicable or apposite to the Complainant’s business, but has also added a non-generic word, “lyris”, not being a dictionary word in the English language.
It occurs to the Panel that “lyris” is the type of coined word that might itself be the trademark of a third party. A cursory glance at the Internet drew the Panel’s attention to a United States corporation, Lyris, Inc., and a search of the United States Federal trademark records disclosed a pending application, No. 77758362, for the trademark “lyris”, in the name of Lyris, Inc, in respect of “Computer software for operating and managing electronic mail marketing, online marketing, search marketing, mobile marketing, and web site analysis”, claiming use in commerce since 1996. The generic word “newsletters” would also be appropriate or apposite to a trademark such as “lyris”.
A number of WIPO Panels have considered domain names that consist of a complainant’s mark and a third party trademark and have concluded that such domain names are confusingly similar to that mark, Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 quoting Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 and Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793.
If “lyris” turns out to be a third party’s trademark, the mere addition of a generic expression appropriate or apposite to both the Complainant’s trademark and a third party’s trademark would not, in the Panel’s opinion, be sufficient to escape a finding that the resultant domain name was confusingly similar to the Complainant’s mark.
Even if the word “lyris” turns out not to be a third party’s mark, the Panel finds in the circumstances of the present proceedings that he can accept the proposition set out in the decision in Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 to the effect that Paragraph 4(a)(i) of the Policy is satisfied where the disputed domain name wholly incorporates the Complainant’s mark, and accordingly finds that the Complainant has satisfied the test set out in Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established in proceedings under the Policy that it is sufficient that a complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the domain name, in order to shift the evidentiary burden to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the domain name, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the present case, the Respondent failed to take part in these proceedings, and the Panel finds that the Complainant has presented a prima facie case that the Respondent lacks either rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the test of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The present case demonstrates a continuation of the pattern of abusive behaviour by the Respondent as evidenced in the previous cases, detailed above, in which the Respondent was also involved, and the Panel has no hesitation in finding that the Complainant in this case has satisfied the test of 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 disputed domain name <lyrisscrippsnetworksnewsletters.com> be transferred to the Complainant.1
George R F Souter
Dated: October 7, 2010