WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tribune Media Services, Inc. v. Moniker Privacy Services, Domain Manager, Ecorp.com. Inc.
Case No. D2011-0453
1. The Parties
Complainant is Tribune Media Services, Inc. of Chicago, Illinois, United States of America, represented internally.
Respondent is Moniker Privacy Services, Domain Manager, Ecorp.com. Inc. of Pompano Beach, Florida, United States of America and Indianapolis, Indiana, United States of America represented by Erika L. Hengst, Esq. of United States of America
2. The Domain Name and Registrar
The disputed domain name <channelguide.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2011. On March 10, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On March 11, 2011, the Registrar 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 Complainant on March 14, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 15, 2011.
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 Respondent of the Complaint, and the proceedings commenced on March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Response was filed with the Center on April 2, 2011.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 18, 2011. 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 United States Trademark Registration No. 1,943,605 for the CHANNEL GUIDE trademark, covering “magazines featuring programming information for television and cable television networks” in International Class 16.
Complainant’s predecessor-in-interest first used the CHANNEL GUIDE mark in 1984, and first registered the mark in 1995.
The Domain Name was created on June 26, 1997.
5. Parties’ Contentions
Complainant is a division of Tribune Company, one of the leading multimedia companies in the United States, operating businesses in publishing, digital and broadcasting. Complainant is in the business of providing entertainment, news and features content that reaches over 100 million consumers worldwide every day, through print, online and onscreen media. As a part of and in conjunction with its entertainment, news and features business, Complainant publishes the Channel Guide magazine, a monthly entertainment and TV programming publication dedicated to making finding what to watch on TV fast, fun and entertaining. Complainant offers subscriptions to CHANNEL GUIDE magazine through its website located at “http://channelguidemag.zap2it.com/index.php”.
(1) Identical or Confusingly Similar to Complainant’s CHANNEL GUIDE mark:
Complainant contends that it owns well-established, exclusive rights in the CHANNEL GUIDE trademark. Complainant explains that, for more than 25 years, it and its predecessors-in-interest have used the mark CHANNEL GUIDE in connection with its CHANNEL GUIDE magazine. Complainant’s registration for the CHANNEL GUIDE mark has been in full force and effect for more than fifteen years, as noted above. As a result of this extensive use, Complainant contends that it owns exclusive rights in CHANNEL GUIDE mark, and has established considerable goodwill and consumer recognition therein.
Complainant states that the Domain Name consists solely of Complainant’s CHANNEL GUIDE mark combined with the gTLD “.com.” The Domain Name therefore is identical or confusingly similar to Complainant’s CHANNEL GUIDE mark under the Policy.
(2) Rights or Legitimate Interest in Respect of the Domain Name:
Complainant maintains that Respondent is not affiliated with Complainant in any way, and Complainant has never licensed or otherwise authorized Respondent to use the CHANNEL GUIDE mark. Absent such authorization, Respondent cannot have legitimate rights in the CHANNEL GUIDE mark or the Domain Name. Respondent is not using or preparing to use the Domain Name in connection with a bona fide offering of goods and services, as evidenced by the fact that the Domain Name contains nothing more than links to other web sites, and does not itself offer any original content. Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but instead is using the Domain Name in a misleading manner to attract consumers looking for Complainant’s genuine CHANNEL GUIDE goods and services, and then diverting them through links to third-party websites, including the websites of Complainant’s direct competitors. In short, Respondent cannot demonstrate any rights to or legitimate interest in the Domain Name under paragraph 4(c) of the Policy.
(3) Registered and Used the Domain Name in Bad Faith:
Respondent’s illegitimate use of the Domain Name, coupled with Complainant’s longstanding use of the CHANNEL GUIDE mark, establishes that Respondent registered the Domain Name primarily for the purpose of disrupting Complainant’s business within the meaning of the Policy. Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the CHANNEL GUIDE mark as to the source, sponsorship, affiliation, or endorsement of its website, in contravention of the Policy. Respondent’s bad faith is further demonstrated by the fact that it is luring consumers seeking Complainant’s CHANNEL GUIDE website to Respondent’s website and then directing those consumers through numerous links to other websites, presumably earning “click through commissions” in the process. Respondent appears to have registered the Domain Name through a privacy protection service, a fact that provides further evidence of bad faith. In short, Respondent’s conduct constitutes bad faith under paragraph 4(b) of the Policy.
Respondent has submitted a Response, in which it states that it has the most extensive portfolio of “channel” related domain names in the world, including the Domain Name and other valuable and popular domain names such as <businesschannel.com>, <videochannel.com> and <muscichannel.com>. In total, according to Respondent it owns approximately 15,000 domain names. Until Respondent is able to develop a particular portfolio or “vertical” of domains, “the domains are used to display advertising links so that they are at least minimally profitable to Respondent.” Respondent claims that it was actively developing a “vertical” related to broadband Internet service that was synergistic with the Channel Guide development. It had acquired several domain names including <dsl.com>, <connectivity.com> and <satellitetv.com> and the Domain Name. However, at that time broadband service was not prevalent in the marketplace; therefore, without DSL, cable and satellite, Respondent could not deploy its streaming channel vertical via its “channel-related domains” until the technology became mainstream.
Respondent chose to focus its attention on its “connectivity” strategy for the past 10 years. Respondent has been utilizing and selling its connectivity services through its related domains. According to Respondent’s initial development research, there is a direct causation between Respondent’s connectivity strategy and the success of the deployment of the 1,089 “channel” related domain names and the Domain Name. Respondent claims that its intent in 1997 when it registered the Domain Name, and its intent today, is to develop the Domain Name into a directory for the rest of its 1,089 channel-related domain names.
Respondent also states that it has been 14 years since it owned the Domain Name and it has never once received a cease and desist letter, a request to purchase, or any other correspondence form Complainant. Respondent thus claims that Respondent has waived its right to bring a claim and that the doctrine of laches prohibits a decision for Complainant. Respondent contends that it would be greatly prejudiced if it was forced to transfer the Domain Name because it has spent years of time and nearly USD 1,000,000 to develop its channel-related domain portfolio. If the Domain Name is transferred, Respondent’s efforts would be futile because the Domain Name is a central and very vital part of its Broadband Channel vertical.
(1) Identical or Confusingly Similar to Complainant’s CHANNEL GUIDE mark:
Respondent does not dispute that Complainant owns the CHANNEL GUIDE trademark and that the Domain Name is the same as this mark. Respondent does dispute, however, whether the general public would be confused and led to believe that the Domain Name was related to the CHANNEL GUIDE mark, which combines two generic and ordinary words. According to Respondent, although Complainant has asserted that it has owned exclusive rights to the CHANNEL GUIDE mark for more than 25 years, Complainant has failed to submit any evidence to show that its print magazine or its website are famous and recognizable so as to cause confusion to the public. Respondent argues that Complainant’s CHANNEL GUIDE mark is not famous and not distinctive.
(2) Rights or Legitimate Interest in Respect of the Domain Name:
Respondent asserts it has a legitimate interest in the Domain Name because it is made up of two common dictionary terms that were attractive to use as part of its “Broadband Channel vertical” and to be the introductory web site to list the remainder of its other 1,089 channel-related domains. Respondent claims that the only reason it registered the Domain Name is because it was intended to be an integral part of the Broadband Channel vertical and because it consisted of two generic terms that can act as a guide for its other channel-related domain names. Respondent’s decision to purchase the Domain Name was part of a thought out and strategic decision, based on the development of its Broadband Vertical channel; it was not the result of an automated system that buys domains when they are available. Respondent claims that it “is making significant and substantial preparations to use the Domain Name for the bona fide offering of goods or services,” and through the purchase of the other channel-related domains over the years. Respondent thus asserts that its intent to use its generic and non-distinct Domain Name as an introductory website for its 1,089 other channel-related domains constitutes using it for a bona fide purpose.
Respondent concedes that the Domain Name is currently parked with a parking service and contains pay-per-click parking links. However, Respondent claims that it is making, and has been making for years, substantial preparations for the Domain Name, which is evidenced by the fact that Respondent has 1,089 other channel-related domains and will be listed them in a directory through the Domain Name at issue. According to Respondent, the Domain Name will eventually be part of its final product, a well-developed system of resources related to Broadband Internet services, which includes a vast directory of channel-related domain names.
(3) Registered and Used the Domain Name in Bad Faith:
Respondent states that it did not have the time or resources in the mid-1990s, when it registered the Domain Name, to investigate whether every domain name it purchased had trademark protection. While it would generally search the Internet to determine whether terms were trademark protected, Respondent also made a practice of registering domain names that were generic dictionary terms and were not related to well-known, obvious trademarks.
Respondent claims that it did not have knowledge of Complainant’s trademark when it registered the Domain Name, and it did not know of Complainant’s print magazine, website or its services. Respondent claims it did not register the Domain Name with the intent to sell it or to disrupt Complainant’s business. In addition, an Internet search at that time would not have uncovered any information about trademark protection for the CHANNEL GUIDE terms. Respondent emphasizes that Complainant wholly failed to offer any direct or circumstantial evidence that Respondent registered the Domain Name in 1997 with Complainant’s trademark in mind. Moreover, there is no evidence that Respondent intends to use the Domain Name to confuse anyone or use it in bad faith. Respondent also argues that Complainant failed to prove that, as of 1997, Complainant was unmistakably associated with its CHANNEL GUIDE mark to the point that Respondent was instigated or induced to register the Domain Name because of Complainant’s mark.
According to Respondent, the Domain Name was registered because of its attraction as a dictionary word for use in relation to its Broadband channel vertical and to act as a table of contents for its other 1,089 channel-related domains. The pay-per-click links on the Domain Name’s website are selected and assigned by a parking company, and Respondent has never requested specific link topics or in any way selected links related to Complainant or its CHANNEL GUIDE trademark.
Finally, with respect to Complainant’s contention that the private registration of the Domain Name in an indicator of bad faith, Respondent claims it is a high profile domain user and it was forced to move all of its domain names into private registration or else it would be inundated with hundreds of solicitations including business solicitations or SPAM.
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has long-established rights, through use and registration, in its CHANNEL GUIDE trademark. Respondent claims there can be no confusion, however, because Complainant’s CHANNEL GUIDE mark is related to print magazines featuring television programs, while Respondent is developing the Domain Name in connection with its Broadband Channel vertical. Moreover, Respondent argues that Complainant has failed to submitted evidence to show that its print magazine or its website is famous and recognizable so as to cause confusion to the public
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. Thus, in order to satisfy this test, the relevant trademark would generally need to be recognizable within the domain name and one can also consider a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
Here, the Domain Name and Complainant’s CHANNEL GUIDE mark are identical. The Panel therefore finds that the Domain Name is identical or confusingly similar to Complainant’s CHANNEL GUIDE mark pursuant to Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a 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 respondent fails to do so, a complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name because, while Respondent has been using it commercially, Respondent has made no bona fide use of it. Respondent is not affiliated with Complainant nor has Complainant authorized Respondent to use the CHANNEL GUIDE mark. Respondent is not using or preparing to use the Domain Name in connection with a bona fide offering of goods and services, as evidenced by the fact that the Domain Name’s website contains nothing more than pay-per-click links and does not itself offer any original content. According to Complainant, Respondent is not making a legitimate noncommercial or fair use, but instead is using the Domain Name in a misleading manner to attract consumers looking for Complainant’s CHANNEL GUIDE services, and then diverting them through links to third-party websites, including sites of Complainant’s competitors. The Panel finds that Complainant has made out a prima facie case on this showing as supported by the evidence Complainant has submitted.
Respondent asserts that it has a legitimate interest in the Domain Name because it is made up of two common dictionary terms that were attractive to use as an integral part of the development of its “Broadband Channel vertical” and as an introductory directory site for its 1,089 other channel-related domain names, both of which constitute bona fide purposes. As discussed above, while Respondent concedes that the Domain Name is currently linked to a pay-per-click site, it stresses that it is making, and has been making for years, substantial preparations to use the Domain Name. This is purportedly evidenced by Respondent registration of the 1,089 other channel-related domain names, which Respondent claims will be listed in a vast directory through a site linked to the Domain Name, and as part of a well-developed system of resources related to Broadband Internet services.
The Panel finds that Respondent’s statements are unconvincing, where it claims that it intends to use of the Domain Name for a “Broadband Channel vertical” or for a vast directory of channel-related domain names. The Domain Name, despite Respondent’s ownership for almost 14 years, has been used for nothing other than to link to a pay-per-click website. The Panel, using the Internet Archive’s Wayback Machine, checked random dates spanning the last 10 years and found that, in all cases, the Domain Name was linked to pay-per-click web pages. The same is true for Respondent’s other channel-related domain names, such as <businesschannel.com>, <videochannel.com> and <muscichannel.com>. Thus, there is no evidence that Respondent is or has been making substantial preparations to use the Domain Name for any of the reasons alleged by Respondent.
The Panel finds that, in view of the evidence before it and Respondent’s unconvincing arguments, Respondent has failed to rebut Complainant’s prima facie showing and has failed to establish any rights or legitimate interests in the Domain Name based on preparations to use it or actual use.
The Panel concludes that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
The Panel considers that the decisive issue in this case is whether or not Respondent has exhibited conduct that fits into bad faith registration and use by (i) the intentional registration of the Domain Name to capitalize on Complainant’s goodwill, with (ii) the Domain Name being used to link to a pay-per-click site featuring links to sites offering services or products in competition with Complainant.
Here, taking the second of these elements first, the Panel concludes that Respondent’s use of the Domain Name (in connection with a pay-per-click site with links to Complainant’s competitors) constitutes a bad faith and infringing use. As the WIPO Overview 2.0 states, a domain name registrant will normally be responsible for content appearing on a website linked to its domain name, even if the registrant is not exercising direct control over the content, unless respondent can show a good faith attempt toward preventing inclusion of advertising or links that profit from trading on a third-party’s trademarks. Respondent has made no such effort to prevent infringing advertising or links, despite the fact that it committed not to infringe on third party rights in its domain name registration agreement.
Last, regarding bad faith registration, the Panel finds that despite Respondent’s unconvincing explanations for how it has been planning to use the Domain Name, there is insufficient evidence to show that Respondent targeted Complainant and its CHANNEL GUIDE trademark, and thereby intended to disrupt Complainant’s business, when it registered the Domain Name almost 14 years ago in 1997. The CHANNEL GUIDE mark is comprised of two common words and Complainant has provided little evidence of the mark’s reputation or distinctiveness (outside of the trademark registration itself), all facts which weigh against a finding of relevant notice and targeting in this case. See WIPO Overview 2.0, paragraph 3.4. Further, Respondent has registered thousands of “channel-related” domain names, which is another point that weighs against a finding that there was targeting of Complainant’s trademark, in particular. Respondent has also indicated that the USPTO’s on-line searchable trademark database was not available in 1997, when the Domain Name was registered. In view of all the facts and circumstances presented in this case, the Panel determines, on balance, that the Domain Name was not registered in bad faith, even if it has been used by Respondent in an infringing and bad faith manner. This case is better suited for a court rather than UDRP procedures.
For all the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Dated: May 16, 2011