WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cable News Network, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Vitalii Yuhimyuk

Case No. D2018-2099

1. The Parties

The Complainant is Cable News Network, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Vitalii Yuhimyuk of Lutsk, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <cnnlivestream.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2018, 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 the Complainant on September 17, 2018, 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 September 19, 2018.

The Center verified that the Complaint and 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”).

On September 19, 2018 and September 20, 2018, the Center received email communications from the Respondent. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2018. On September 25, 2018, the Center received an email communication from the Respondent. On September 27, 2018, the Center received an email communication from an unknown sender. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018.

On October 16, 2018, the Center notified the Parties that it would commence the panel appointment process. The Center appointed Adam Taylor as the sole panelist in this matter on October 16, 2018. 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 is the well-known United States cable television network, known as “CNN”, which was launched on June 1, 1980, and currently reaches more than 96 million households and 890,000 hotel rooms. The Complainant’s website at “www.cnn.com” is one of the most popular news websites in the world.

The Complainant’s services include live online streaming of video content through the “CNN GO” streaming service, available through “www.cnn.com” as well as via the Complainant’s various mobile applications.

The Complainant owns many registered trade marks for “CNN” worldwide including United States trade mark no. 1597839 for the stylised term “CNN”, filed on October 6, 1989, registered on May 22, 1990, in class 38.

The disputed domain name was registered on February 21, 2018.

It has been used to resolve to a website entitled “CNN Live Stream 24/7”, including headings such as “CNN News watch online” and “CNN News Live”. The website carried a live stream of the Complainant’s broadcasting content as well as similar content from the Complainant’s competitors. In addition, the website contained a range of banner advertisements plus a link to a “Buy me a coffee” donation platform.

A disclaimer at the bottom of the home page stated that the website only contained material from third party TV channels which were “freely available on all Internet”, that it did not “claim to be affiliated in any way with the broadcasted channels” and that “[a]ll content is copyright of their respective owners – CNN News”.

On May 31, 2018, the Complainant sent a legal notice to the host of the Respondent’s website, which removed the website. The site was later reinstated with a different host, which did not respond to takedown requests.

The Respondent also owns the domain name <msnbcdailyshows.com>.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The Complainant has developed considerable reputation and goodwill in the United States and worldwide and its trade marks are famous.

The disputed domain name fully incorporates, and is confusingly similar to, the Complainant’s trade marks. The terms “live” and “stream” enhance the similarity as they imply an authorised source for the Complainant’s content.

The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has never been authorised by the Complainant to use the Complainant’s marks.

The disputed domain name does not reflect the Respondent’s name.

The site at the disputed domain name does not constitute a bona fide offering as it is trading on the goodwill of the Complainant’s marks as used within the disputed domain name and it is also providing the Complainant’s copyrighted content without authorisation. Nor does such activity constitute legitimate noncommercial or fair use.

The Respondent has registered and used the disputed domain name in bad faith in accordance with the following provisions of the Policy:

paragraph 4(b)(ii): The Respondent has prevented the Complainant from reflecting its mark plus the descriptive term “live stream”, which directly relates to the Complainant’s services, in a <.com> domain name. The Respondent’s registration of <msnbcdailyshows.com> indicates that it has engaged in a pattern of such conduct.

paragraph 4(b)(iii): The Respondent’s activity directly competes with, and disrupts, the Complainant’s business by redirecting Internet users to the Respondent’s illegitimate site, thereby monetising web traffic which would and should have been directed to the Complainant.

paragraph 4(b)(iv): The Respondent’s website was clearly designed to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks as well as illegally providing the Complainant’s content. The disclaimer is insufficient to prevent bad faith and in fact establishes that the Respondent was aware that it was using the Complainant’s content and trade marks without permission. In any case, the Complainant’s mark is so famous that the Respondent could not conceivably argue that it was unaware of it.

B. Respondent

The Respondent made a number of submissions in informal emails to the Center, which the Panel has decided to admit as a Response on the basis explained in section 6A. Below is a summary of the Respondent’s submissions as understood by the Panel - some of the Respondent’s emails were not easy to follow:

The Respondent adheres to the rules applicable to intellectual property.

The Respondent makes no guarantees or promises regarding its service and accepts no liability for the actions of “our users”.

The disclaimer on the Respondent’s site states that the Respondent does not claim to be affiliated with owners of the video streams played on its site and that all content remains the copyright of the respective owners.

A trade mark has a clearly defined shape, size, colour and other distinction. It is a recognisable sign, design or expression which identifies and distinguishes products or services from a particular source. The Complainant’s trade mark is “CNN” not “cnn”. The domain name <CNNlivestream.com> may be “copyrighted” whereas <cnnlivestream.com> is not.

The Respondent’s use of the term “cnn” was intended simply as an abbreviation of the phrase “cool news now”, which cannot be protected as a trade mark or copyright. Otherwise, the Respondent could register “com” as a trade mark and then sue millions of sites using this suffix.

The Respondent did not choose the disputed domain name for the purpose of misleading anyone or for any other unlawful purpose.

After receiving formal service of the Complaint from the Center, the Respondent stated by email of September 25, 2018 that he “made a mistake” and had chosen “a contentious domain name”. He said that he “refuse[d]” the disputed domain name in favour of the Complainant’s rights and that the disputed domain name should be removed or disconnected “forever”.

6. Discussion and Findings

A. Informal Response

As mentioned above, the Respondent has sent a number of emails to the Center, which do not comply with the formal requirements for a Response set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the emails as a Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.

B. Identical or Confusingly Similar

The Complainant has established rights in the mark “CNN”by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive terms “live” and “stream” is insufficient to avert a finding of confusing similarity.

The Respondent seeks to distinguish between the capitalised term “CNN” and the lower-case version “cnn”, which it claims is the one allegedly used in the disputed domain name. However, domain names are not case-sensitive and, in any event, the Complainant’s mark is readily recognisable within the disputed domain name.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s services. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Panel notes the following:

1. The disputed domain name consists of the Complainant’s distinctive and world-famous mark in combination with the terms “live” and “stream”, which are highly relevant to the Complainant’s services.

2. The headings used on the Respondent’s website imply a connection with the Complainant.

3. The website also included unauthorised broadcast of the Complainant’s content, thereby infringing the Complainant’s copyright. The Respondent asserts that the content was “freely available” on the Internet but, even if so, this did not entitle the Respondent to reproduce it without authorisation. The Respondent must have been aware of this as the disclaimer on its website specifically referred to the Complainant’s ownership of copyright in its content.

4. The Respondent relies on its disclaimer as indicating its lack of affiliation with the Complainant. However, so far as the Panel is aware, the disclaimer was not located in a prominent position and, in any case, it was belied by the disputed domain name itself as well as the website headings which, in the Panel’s view, did imply an official connection with the Complainant. Furthermore, see section 3.7 of WIPO Overview 3.0, to the effect that where, as here, the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. And that, in such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. The Panel does indeed consider that the disclaimer constitutes such an admission.

5. The Respondent’s explanation that it selected “cnn” as an acronym for “cool news now” is implausible, not least because (a) there is no evidence of use of this phrase on the website and (b) the website was focussed on the Complainant.

6. In its email of September 25, 2018, the Respondent virtually admits bad faith, conceding that it made a “mistake”.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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, <cnnlivestream.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: October 30, 2018