WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox Holdings, Inc. v. Gary Lam
Case No. D2004-0931
1. The Parties
The Complainant is Cox Holdings, Inc., Atlanta, Georgia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondent is Gary Lam, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The domain name in this case, <kiro7.com> (the “disputed domain name”), is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2004. On November 8, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On November 9, 2004, eNom replied by email to the Center stating that the current contact details could be found on its WHOIS. According to this, the registrant as well as the administrative, billing, and technical contact is Gary Lam (“the Respondent”) whose listed address is KCPO, Central, Hong Kong, People’s Republic of China.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2004.
The Center appointed David H. Tatham as the sole panelist in this matter on December 17, 2004. 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 Cox Holdings, Inc., a Delaware corporation. Cox Holdings, Inc. is the 100% shareholder in Cox Broadcasting, Inc., a Delaware corporation which is, in turn, the 100% shareholder in KIRO, Inc., a Mississippi corporation, d/b/a KIRO-TV (these three corporations are hereinafter jointly and severally referred to as “the Complainant”).
The Complainant is the owner of the marks KIRO, KIRO7 and KIRO 7. These marks are used by the Complainant primarily for television broadcast and entertainment services focused on the Seattle, Washington market which is the twelfth largest television market in the United States. The mark KIRO uniquely indicates the call letters of the Complainant’s broadcast station, located on Channel 7 in Seattle, Washington, and the marks KIRO7 and KIRO 7 are also used by the Complainant in conjunction with the same.
The Complainant has continuously and extensively used the KIRO, KIRO7 and KIRO 7 marks to identify, advertise and promote its products and services since at least as early as 1958.
The Complainant has a United States federal registration for the mark KIRO, Reg. No. 2,585,328, a copy of which was attached to the Complaint, as well as substantial common law trademark rights in the KIRO7 and KIRO 7 marks through forty-three years of continuous on and off air use of these marks. In this context the Complainant referred to the Decision in Capital Broadcasting Company, Inc. v. Momm Amed Ia, WIPO Case No. D2000-1610 (January 24, 2001) in which it was found that Capitol Broadcasting had created common law trademark rights in the terms “WRAL”, “WRAL5” and “WRAL-TV5” based on using those terms without interruption since 1956, spending significant amounts of money on advertising and promotional material in respect to the marks, and using the call letters “WRAL” and the composite terms both on its written material, on its television broadcasts and on its website.
The Complainant has invested a substantial amount of time and resources in promoting and advertising its KIRO, KIRO7 and KIRO 7 marks, products, services, and website. The Complainant spends the equivalent of several million dollars annually to promote the KIRO, KIRO7 and KIRO 7 brands through its own on-air use as well as through outside media. The Complainant also spends millions of dollars annually in advertising and in-kind donations to community service organizations for public service campaigns and joint community projects.
As a result of the foregoing, the Complainant has developed extremely valuable goodwill and an outstanding reputation in its KIRO, KIRO7 and KIRO 7 marks which are associated exclusively with the Complainant and/or its affiliated entities and which have contributed to the popularity and fame of the Complainant’s television station.
The Complainant also operates a website, accessed through <kiro.com> and <kirotv.com>, which promotes its KIRO, KIRO7 and KIRO 7 products and services and is itself branded under a prominent KIRO 7 mark in logo form at the top of the screen. The <kiro.com> domain name was first registered in January 1995, and the associated website receives heavy traffic. A copy of the Complainant’s KIRO 7 website was attached to the Complaint.
According to the WHOIS record, the Respondent registered the disputed Domain Name on August 5, 2003, which is well after the Complainant’s first use of the KIRO, KIRO7 and KIRO 7 marks.
5. Parties’ Contentions
The Complainant contends that the Respondent is not a licensee of the Complainant, nor is it authorized to use the Complainant’s KIRO, KIRO7 or KIRO 7 marks. The Respondent registered the disputed Domain Name without the authorization, knowledge or consent of the Complainant. In fact, the disputed Domain Name was previously in the possession of the Complainant after the Complainant successfully brought a UDRP action before a WIPO arbitration panel to recover the Domain Name. (Cox Holdings, Inc. v. Private, WIPO Case No. D2001-1446, March 11, 2002). The Complainant was unaware that the disputed Domain Name was no longer in its possession until it discovered that the Respondent was operating a commercial website using the Domain Name.
According to the Complainant, the disputed Domain Name does not currently resolve to an active website. However, when the use and registration of the disputed Domain Name came to Complainant’s attention, it resolved to a website containing a generic search engine page and a list of sponsored links. Among those sponsored links were links to the topics of “Sex Offenders” and “Porno.” When there was an active website attached to the disputed Domain Name, the site also generated a “pop up” advertisement that users would have to click through to close in order to view the content of the underlying page. True copies of screen shots of the website located at “www.kiro7.com”, as well as the “pop-up” forced on consumers, were attached to the Complaint.
The Complainant asserts that the potential for confusion is exacerbated in this case because during the time when the disputed Domain name resolved to an active website, it contained prominent category links to “Seattle,” “News,” “Traffic,” and “Weather.” The Complainant operates a sophisticated news gathering and broadcasting organization that features news, traffic, and weather reporting as a main component of the services provided to viewers in the Seattle area. Given the close approximation of the disputed Domain name to the Complainant’s marks and the inclusion of links on topics similar to services offered by the Complainant, an Internet user seeking the Complainant’s website may readily become confused into believing that the disputed Domain Name is somehow associated, affiliated with, or sponsored by the Complainant.
On August 18, 2004, counsel for the Complainant sent a letter via international mail to Gary Lam, who was then the listed Administrative and Technical Contact for the disputed Domain name. This letter was sent to the address listed in the WHOIS contact information, KCPO, Central, Hong Kong, People’s Republic of China. Counsel for the Complainant also sent a copy of the above letter via e-mail to the address listed for Gary Lam in the WHOIS database. Copies of the letter and the e-mail were attached to the Complaint.
On September 1, 2004, counsel for the Complainant sent a follow-up letter via email to the Respondent regarding the disputed Domain Name. A copy of this email was also attached.
Counsel for the Complainant never received a response to any of their letters and e-mails.
Identical and Confusingly Similar
The Complainant further contends that the disputed Domain Name is identical to its KIRO7 mark, that it is confusingly similar to its KIRO 7 mark because it is virtually identical (the only difference being the removal of the space between the word and the numeral), and that it is confusingly similar to its US registered trademark KIRO, No. 2,585,328 because it incorporates the whole of this mark with the addition of a generic term relating to the nature of the Complainant’s services, i.e. that the KIRO television station is located on Channel 7.
No Rights or legitimate Interest
Under this heading, the Complainant made the following allegations, which were supported by references to prior UDRP decisions.
- The Respondent has never been authorized by Complainant to use the KIRO, KIRO7 or KIRO 7 marks in any way.
- The Respondent has not established rights or legitimate interests in the disputed Domain Name by establishing use or preparations to use it for any bona fide purpose. The disputed Domain Name does not currently resolve to an active website. Furthermore, at the time when Respondent did point the disputed Domain Name to an active site, it directed Internet users to a website that contained a search engine page and a list of sponsored links. There is no indication now, nor was there any indication previously, that the site is related to the Respondent. Thus, the Respondent’s use of the domain cannot be considered to be made in connection with a bona fide offering of goods or services.
- The Respondent cannot establish rights in the disputed Domain Name under paragraph 4(c)(iii) of the Policy because it has made no legitimate non-commercial or fair use of the disputed Domain Name without intent for commercial gain to misleadingly divert consumers. As stated above, when the disputed Domain Name resolved to an active website, an Internet user connecting with the Respondent’s website at the disputed Domain Name was confronted with a “pop up” advertisement. This advertisement invited users to click on the ad (“FREE PlayStation 2-- Hit a duck to get a FREE PlayStation 2!”) so that the user would be re-directed to another site. The Respondent thus attempted to misleadingly divert users to another website for commercial gain. Such actions are not legitimate uses of domain names.
The Respondent is unable to show any of the factors set forth in paragraph 4(c) of the Policy to establish rights or legitimate interests in the disputed Domain Name. Therefore he has none.
Registered and Used in Bad Faith
Under this heading, the Complainant made the following allegations, which again were backed up with references to prior decisions made under the Policy on the relevant points.
- The Respondent’s registration of the disputed Domain Name and failure to use such name for legitimate purposes establish that Respondent has used and registered the name in bad faith under the criteria set forth in paragraph 4(b)(iv) of the Policy. There is no evidence that the Respondent was ever legitimately known as “KIRO7.” The only evident reason for the Respondent to have registered the disputed Domain Name for a website was to attract users looking for Complainant’s website for its own commercial gain.
- When the disputed Domain Name resolved to an active website, the search engine page featured links, among others, to “Sex Offenders” and “Porno.” The Respondent’s linking to pornographic material necessarily tarnishes the reputation and goodwill in the KIRO, KIRO7 and KIRO 7 marks that Complainant has spent more than forty years promoting. The Complainant is a local television broadcaster licensed by the United States Federal Communications Commission and obligated under the terms of its license to serve the public interest and to uphold the standards of decency, which standards pornographic materials necessarily violate. The Complainant therefore argues that the inclusion of links to pornographic materials directly harms the goodwill that the Complainant has generated in its marks as indicators of a trusted source of news, information, and entertainment, free from such objectionable material.
- Additionally, as stated above, when the disputed Domain Name resolved to an active website, visitors were subjected to a “pop up” advertisement that appeared in front of the content of the website. Such activity is additional evidence of bad faith.
- Where, as here, it is not possible to conceive of any plausible actual or contemplated active use of a domain name by the Respondent that would not be illegitimate, bad faith use and registration must be found.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a Response, not only will the Panel accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint. Nevertheless, even though there has been no Response, the Panel must still, under paragraph 14(a) of the Rules “proceed to a decision on the complaint” which it will now do.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has a valid US registration of the trademark KIRO. It is of fairly recent origin, but its date of first use is stated to be February 8, 1958. The Complainant also claims common law rights in the marks KIRO7 and KIRO 7. It produces very little evidence thereof, but these rights have not been challenged by the Respondent, and the Panel is prepared to accept them. It is of course by now well established that a Complaint under the Policy can be based on rights acquired through use at common law.
One of the Complainant’s marks (KIRO7) is identical to the disputed Domain Name, since it is customary when comparing a domain name with an earlier right under the Policy to disregard a suffix such as ‘.com’, which is of no relevance and generic. The Complainant’s other two marks are, in the opinion of the Panel, confusingly similar to the disputed Domain Name.
Thus the Panel finds that paragraph 4(a)(i) of the Policy is proved.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie and, indeed, a very strong case that the Respondent lacks any rights to or a legitimate interest in the disputed Domain name by alleging that the Respondent is not one of its licensees, that it is not authorised to use any of its trademarks, that it registered the disputed Domain Name without the Complainant’s consent, that it has not made any preparations to use the disputed Domain Name for any bona fide purpose, that it has not made any legitimate or non-commercial or fair use of the disputed Domain Name, and that it has attempted to misleadingly divert users to another website for commercial gain.
Once a prima facie case has been made out, the burden shifts to a Respondent to come forward with proof that it does have a legitimate right or interest in the name. However, in this case the Respondent has filed no response and has therefore made no attempt to disprove or counter the Complainant’s allegations.
Therefore the Panel finds that the Complainant has also satisfied its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances which shall be considered as evidence that a domain name has been registered and used in bad faith. It would seem that at least two of them are relevant in this case, namely –
“4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website at the disputed Domain name is currently ‘unavailable’, but the Complainant has supplied a copy of it taken on July 23, 2004, when it was active. It is clear from this that the Respondent is in violation of both of the above sub-paragraphs from the Policy. There are several references to Seattle, which is the base for the Complainant’s broadcasting activities, there are links to ‘porno’ and ‘sex offender’ sites as the Complainant has pointed out, but there is also a link to ‘porn videos’; and there are pop-up advertisements.
All of these are clear evidence of bad faith, but in addition the Panel cannot conceive of any genuine reason why the Respondent should have chosen to adopt and register a domain name which is identical to that of the Complainant.
Thus the Panel finds that paragraph 4(a)(iii) of the Policy is also proved.
The Complainant has been put to considerable trouble in this case by having to ‘reclaim’ the disputed Domain Name, which was previously awarded to it by a Panel in 2002. It provides no explanation as to why it lost possession of the domain name, but that earlier decision is available on the WIPO website. The Respondent was clearly aware of the Complainant and its business – hence the many references to Seattle on his website. The Respondent should also have been aware of the earlier decision, which can be found by a simple Google search, and clearly bears much of the blame for the trouble and expense to which the Complainant has been put. The Panel regrets therefore that the Policy contains no provisions for an award of costs or other sanctions on the Respondent for his reprehensible behaviour.
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 <kiro7.com> be transferred to the Complainant.
David H. Tatham
Dated: December 30, 2004