WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting Inc. v. Fundacion Private Whois / PPA Media Services, Ryan G Foo
Case No. D2012-2477
1. The Parties
The Complainant is CBS Broadcasting Inc. of New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (the “United States” or the “U.S.”).
The Respondent is Fundacion Private Whois of Panama, Panama / PPA Media Services, Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <cbssportsradio.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2012. On December 18 and 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2012, 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 Complainant filed an amended Complaint on December 31, 2012.
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 January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2013.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on February 6, 2013. 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
The Complainant, a subsidiary of CBS Corporation, is one of the leading television and radio broadcasting companies in the United States of America and provides entertainment, news, and sports programming globally.
Since 1933, the Complainant has used the CBS mark to identify its services.
Among its services and beyond the most popular and well-known television programs in the United States, there are other two divisions of CBS Corporation:
1) CBS Sports, year-round leader in television sports. In addition, CBS Sports directs the cable channel CBS Sports Network, which covers more than 340 live games annually and showcases 30 men’s and women’s sports. CBS Sports also partners with CBSSports.com, creating a recognized leader among sports Internet destinations;
2) CBS Radio which is one of the largest major-market radio operators in the U.S., with stations covering news, sports, talk, rock, country, Top 40, classic hits, and urban formats, among others.
The Complainant is the owner of several trademark registrations for CBS, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name, which was registered on January 28, 2010.
- Trademark CBS RADIO, U.S. Registration No. 3295366 registered on September 18, 2007;
- Trademark CBS SPORTS, U.S. Registration No. 2928976 registered on March 01, 2005 (first use December 31, 1961);
- Trademark CBS RADIO SPORTS, U.S. Registration No. 2346473 registered on May 02, 2000 (first use 1983);
The Complainant is also the owner of the domain name <cbssports.com> registered on 8 May 1996.
5. Parties’ Contentions
A. The Complainant
The Complainant argues that the disputed domain name is identical and/or confusingly similar to its CBS, CBS RADIO, CBS SPORTS, CBS RADIO SPORTS trademarks due to the addition to the words “sports” and “radio” to the trademarks in the disputed domain name.
In fact even if the added words “sports” and “radio” could be considered generic words, in this case, are directly related to the services offered by the Complainant (CBS Broadcasting Inc. v. US address, WIPO Case No. D2010-0322).
Thus, especially in this case, the use of the words “sports” and “radio” determine an obvious association with the Complainant’s trademarks and does not dispel the likelihood of confusion.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests.
The Complainant sent on October 3, 2012 a demand letter to the then-current registrant of the disputed domain name, whose identity was concealed at that time through the privacy service PrivacyProtect.org. Receiving no response to that letter, CBS sent on October 19, 2012 a second email to the registrant through PrivacyProtect.org and again the Complainant did not receive any response.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the word “cbs”, which is identical to the Complainant’s registered well-known trademark CBS.
It is clear that the disputed domain name incorporates in its entirety the CBS trademark to which the generic terms “sports” and “radio” have been added.
The generic word may even add to the confusing similarity in particular when they refer to the services offered by the Complainant (see also F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727, and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011-2121 “The additional word “environment” following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.”)
The Panel therefore concludes that the disputed domain name <cbssportsradio.com> is confusingly similar to the Complainant’s trademark CBS. The Panel also finds that the disputed domain name is confusingly similar to the trademarks CBS RADIO, CBS SPORTS, CBS RADIO SPORTS.
It is also established that the addition of a generic term (such as here the word “sports” and “radio”) may not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel finds the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s CBS trademarks.
In its Complaint, the Complainant has provided evidence that the website associated with the disputed domain name is used to gain unfair benefit of the CBS trademarks.
The Respondent has registered the disputed domain name attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website, and of the services offering on the website.
In fact the Complainant has demonstrated that when an Internet user types into a browser the address of the disputed domain name, the user is connected to a click-through linking portal located at “www.onlinefwd.com”.
The “www.onlinefwd.com” website references the Complainant’s CBS trademarks (“CBS Sportsline”, CBS COLLEGE SPORTS, “CBS Radio 880” and CBS NEWS, for example), but actually redirects Internet users to additional click-through portal pages with links leading to third-party web pages.
In addition, the Complainant has shown that the links listed in the Respondent’s website to which the disputed domain name resolves also displays links such as “Radio Podcasts”, “Radio Stations”, “Radio Station Guide” and “Download Radio” which appear to promote services of possible competitors of the Complainant, and lead to additional pay-per-click linking portals that display links to third-party websites.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them trying to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant.
The disputed domain name is only used to divert Internet users to other sites offering services that compete with those of the Complainant.
On the basis of the above, the Panel finds that the Respondent registered the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks and domain names (Policy, paragraph 4(b)(iii)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last point of the Policy, paragraph 4a(iii).
For 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 <cbssportsradio.com> be transferred to the Complainant.
Date: February 20, 2013