Complainant is NBC Universal Inc. of New York, United States of America. Respondent is Michael McGeevey of Deerfield Beach, Florida, United States of America.
The disputed domain name <thetonightshow.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2009. On May 27, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On that same date, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 26, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 2, 2009. 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.
Complainant is one of the world's leading media and entertainment companies in the development, production, and marketing of entertainment, news, and information to a global audience. Complainant owns and operates the NBC television network. NBC was initially formed as a national radio network in 1926 and was for many years the leading radio network in the United States. Beginning in the 1940s, NBC emerged as a leading television network, and it is currently one of the top four television networks in the United States. NBC is viewable by over 97% of all households (over 100 million homes) in the United States and consists of over 200 VHF and UHF affiliated stations in the United States and its territories. Complaint, Annex C.
Since 1954, NBC has produced a television show known as The Tonight Show, a late night talk and variety show featuring, among other things, appearances by popular celebrities, musical guests, and newsworthy names. Over the years, The Tonight Show has become a widely viewed late night talk show program and the fourth longest running program in United States television history. Since it first premiered on September 27, 1954, the show has been hosted by five well known on-air personalities: Steve Allen, Jack Parr, Johnny Carson, Jay Leno, and currently Conan O'Brien. Complaint, Annex D. It is fair to say that The Tonight Show and its chief competitor Late Night have become American Institutions, regularly discussed by the news media and by millions of Americans around the proverbial water cooler.
Complainant is the owner of the trademark registration THE TONIGHT SHOW issued by the United States Patent and Trademark Office (“USPTO”) on January 14, 1975.
Respondent's predecessor registered the domain name at issue on November 21, 1998. Complaint, Annex L. The original holder of the registration was Unofficial Fan Club. The original registrant used the domain name to resolve to an “under construction” type notice. Complaint, Annex M. Respondent acquired the domain name at issue in or about January 2006. Complaint, Annex N.
Respondent has used the domain name to resolve to a parking site, which contains links to related subjects, to NBC's competitors, and to miscellaneous businesses. Complaint, Annexes O, P, and Q.
Complainant alleges that the domain name at issue is identical to Complainant's THE TONIGHT SHOW trademark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Respondent's domain name consists of Complainant's well known registered trademark and the gTLD suffix “com”. Panels have long held that the gTLD suffix is to be disregarded in determining whether the domain name is identical or confusingly similar to the trademark of a complainant. Avnet, Inv. v. Aviation Network, Inc., WIPO Case No. D2000-0046. Accordingly, the Panel finds that the domain name at issue is identical to Complainant's trademark.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the 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 the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP".
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
The domain name at issue resolves to a parking site. The parking site contains links to businesses or television shows similar to The Tonight Show, including television personalities who appear on networks which are competitors of NBC. The parking site also contains links to miscellaneous business, all of which generate income to Respondent. This misuse of the domain name at issue constitutes a violation of paragraph 4(b)(iv) of the Policy and bad faith registration and use. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
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, <thetonightshow.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: July 3, 2009