WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scripps Networks, LLC v. Frank Dambrosio

Case No. D2010-2094

1. The Parties

Complainant is Scripps Networks of Knoxville, Tennessee, United States of America, represented by Frost Brown Todd LLC, United States of America.

Respondent is Center Productions of New York, New York, United States of America, represented by Sandra Pirie Carson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hgtvmagazine.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

A. Filing History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2010, GoDaddy.com, Inc. 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 December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for response was January 2, 2011. Respondent did not submit a response by the due date. Accordingly, the Center notified Respondent’s default on January 6, 2011.

The Center appointed Michael A. Albert as the sole panelist in this matter on January 13, 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.

On January 14, 2011, Respondent requested an extension of time to respond, citing unforeseen circumstances and failure to receive the Complaint as the reasons Respondent defaulted. However, a copy of the Complaint, and a Notification of the Commencement of Administrative Proceeding, were sent Respondent by the Center to all contact details (email and post) made known to the Center by the Complainant, and by the Registrar of the domain name, which were confirmed as delivered. Under Rules, paragraph 2(a), the Center discharged its obligation to notify the Respondent of this dispute, by sending the Complaint to all contact details as referenced.

On January 18, 2011, the Panel granted a 10 day extension for Respondent to file a response. Respondent filed a response (the “Response”) on January 28, 2011.

On February 7, 2011, Complainant submitted a supplemental filing.

On February 8, 2011, Respondent submitted a supplemental filing.

B. The Panel’s Decision on Complainant’s Supplemental Filing

Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties but “make no provision for a party to file an additional submission without leave of the panel.” Harrods Limited v. Braw Shaw, WIPO Case No. D2004-0411. It is well established that additional submissions that are unsolicited by the Panel “should only be admitted in exceptional circumstances.” Id. The Panel finds that the circumstances of this case are not exceptional and “in any case, nothing in those submissions would have changed the Panel’s conclusion on the merits.” Id. The Panel declines to admit or consider either the Complainant’s or the Respondent’s supplemental filings.

4. Factual Background

Complainant is a company that creates home and garden products and services in connection with the registered trademark HGTV and other similar marks. Some of the services Complainant has created include television broadcasting services and various home and garden services available online at <hgtv.com>. Complainant’s HGTV television network debuted in 1994. Since its television airing debut, the HGTV television network has grown to be one of the largest home and garden television networks in the world. Complainant’s website, located at the domain name <hgtv.com> has been active since at least 1996 and now averages more than five million unique visitors per month.

Respondent purchased and registered the Disputed Domain Name on October 14, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has extensively advertised and promoted its home and garden services and products in connection with the HGTV mark and other similar marks. Complainant claims that its use of the HGTV marks in marketing and promotion has caused consumers to recognize the HGTV marks as indicators of quality. Complainant argues that this indication of quality leads consumers to seek out and purchase Complainant’s HGTV products and services over competitors’ products and services.

Complainant contends that the Disputed Domain Name is confusingly similar to the HGTV mark because it incorporates the mark in its entirety, with the addition of the generic term “magazine.”

Complainant further contends that Respondent has no legitimate rights or interests in the Disputed Domain Name because: (1) Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services; and (2) Respondent’s name does not include the term “HGTV.”

Complainant contends that Respondent registered the Disputed Domain Name to capitalize on consumer recognition of the HGTV mark. Complainant argues that the Disputed Domain Name implies consumers will be able to receive HGTV products and services at the website, which is false.

Complainant also contends that the Disputed Domain Name is merely a “placeholder” and further argues that Respondent set up the website to profit from using Complainant’s marks. Complainant claims that the website, which corresponds to <hgtvmagazine.com> features “Sponsored Listings” that link Internet users to third-party websites of other companies, including competitors of Complainant as well as other entities completely unrelated to Complainant. Complainant argues that by doing so, Respondent is generating revenue through a “pay-per-click” advertising scheme. Complainant also argues that even if Respondent is not using a revenue-generating scheme, Respondent still has no legitimate rights or interests in the Disputed Domain Name and registered and is using the Disputed Domain Name in bad faith.

B. Respondent

Respondent contends that <hgtvmagazine.com> is intended to be an animated website and online magazine for toddlers and preschool children. Respondent claims the magazine is about four children from four different countries who speak four different languages. Respondent contends the four children meet each other on a children’s website and video-conference (specifically, “Skype”) each week. Respondent claims the website is designed to teach preschool children that they can be friends with children all over the world despite language barriers. Respondent also claims that “HGTV” as used in the Disputed Domain Name refers to an acronym representing the children’s “cyber club.”

Respondent contends that the Disputed Domain Name is not confusingly similar to Complainant’s HGTV mark because “Respondent’s website does not deal in any way with the over one hundred goods and services listed by Complainant.”

Respondent contends that it has rights or legitimate interests in the Disputed Domain Name because Respondent has been working towards simultaneously launching the website, magazine, and related books since the Disputed Domain Name was purchased in October, 2010. Respondent also contends that the Disputed Domain Name is not yet in use.

Finally, Respondent contends that it did not register the Disputed Domain Name in bad faith and is not using it in bad faith. Respondent claims that because Respondent and Complainant are not competitors in any way, the Disputed Domain Name cannot possibly be used to disrupt Complainant’s business. Respondent argues that Internet users have not been misdirected from Complainant’s HGTV services to competitors’ services and asserts that “Respondent’s website will not use pay-per-click schemes.”

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Name is not identical to Complainant’s registered trademark HGTV, but consists of the term HGTV combined with the generic term “magazine.”

A domain name that fully incorporates a complainant’s registered mark is often found to be confusingly similar despite the addition of a generic term. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102. In Nokia Corporation, the Panel found that the addition of the word “girls” to NOKIA was not enough to keep the domain name at issue from being confusingly similar to the complainant’s trademark. The panel noted that the term “girls” is a general noun and “a rather neutral addition to [the] trademark.”

In this case the term “magazine” is not only too generic and neutral to distinguish the Disputed Domain Name from Complainant’s trademark, but may actually increase confusion. While “magazine” may refer to a print publication, it may also refer to a broadcast or online publication. In any event, both are types of media. Because broadcast media constitute a major component of Complainant’s services, the term “magazine” used in conjunction with HGTV increases the confusing similarity of the Disputed Domain Name with Complainant’s mark.

Respondent argues that because the website features a children’s magazine that is not in any way related to home and garden services, the Disputed Domain Name is not confusingly similar to Complainant’s HGTV mark. This argument does not persuade the Panel. “The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark.” Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.

The Panel finds that the Disputed Domain Name <hgtvmagazine.com> is confusingly similar to Complainant’s trademark HGTV.

B. Rights or Legitimate Interests

Although Complainant has the ultimate burden of proving all elements of paragraph 4(a) of the Policy, once Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the Disputed Domain Name, the burden of production shifts to Respondent “to rebut the [prima facie] showing by providing concrete evidence.” See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; see also Dell Inc. v. George Dell and Dell Net Solutions, supra. “‘Concrete evidence’ constitutes more than mere personal assertions…Evidence in the form of documents or third party declarations should be furnished in support of such assertions.” Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which would, if proven by Respondent with concrete evidence, be sufficient to demonstrate that Respondent has rights or legitimate interests in the Disputed Domain Name. The list includes “before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.”

Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Complainant demonstrated that Respondent has never been known by the name HGTV MAGAZINE and has not used the Disputed Domain Name in connection with a bona fide sale of goods. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. supra. Complainant also submitted evidence, including a screenshot of Respondent’s website, that Respondent’s website was a mere placeholder providing sponsored links to third-party websites.

Respondent attempts to rebut Complainant’s prima facie showing by arguing that Respondent has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent claims the Disputed Domain Name is not yet in use but does not offer any explanation for the <hgtvmagazine.com> printout that Complainant included with its Complaint. The printout shows not only that the Disputed Domain Name was in use but that it featured presumably paid advertisements for third-party websites called “Sponsored Links.” Further, while Respondent makes conclusory assertions about ongoing preparations for launching the website and a children’s magazine, Respondent does not provide any concrete evidence, such as examples of preparations that have occurred, materials, samples of the children’s magazine or portions thereof, evidence of expenditures made on such preparations, an estimated date of completion, or any other evidence to back up the claim of bona fide preparations to offer a noncompeting service or product. Respondent’s alleged intention to use the Disputed Domain Name are insufficient to rebut Complainant’s prima facie showing. See LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186 (“Respondent has not provided any evidence of facts that indicate that it has made preparations to use the domain name for the intended purpose”).

The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that Complainant show registration and use of the Disputed Domain Name in bad faith. Paragraph 4(b) presents a non-exhaustive list of circumstances considered sufficient to demonstrate registration and use in bad faith. One of the listed circumstances, paragraph 4(b)(iv), is where Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Registration in Bad Faith

Respondent may be found to have registered the Disputed Domain Name in bad faith if Respondent knew or should have known of the existence of Complainant’s trademark rights. See Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428. Respondent registered the Disputed Domain Name in October 2010, at least 13 years after Complainant registered its first HGTV trademark and 16 years after the HGTV television network premiere. The HGTV television network is widely advertised and widely known throughout the United States and features popular television programs such as “House Hunters” and “Color Splash.” Respondent does not claim to have been unaware of Complainant’s rights to the HGTV trademark or the HGTV network when Respondent registered the Disputed Domain Name. Accordingly, the Panel concludes that Respondent knew of Complainant’s trademark rights.

While Respondent argues that “the domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s web site…” Respondent does not support this conclusory assertion with any facts or evidence. Respondent merely claims to be working on a “wholesome website intended for small children.” But unsupported assertions cannot overcome a Complainant’s evidence. See Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776 (“while the Respondent claims it did not register the disputed domain name in order to profit from or exploit the Complainant’s mark, compelling facts and circumstances… suggest otherwise”). There is sufficient circumstantial evidence that Respondent registered the Disputed Domain Name in bad faith.

The Panel finds that Respondent registered the Disputed Domain Name in bad faith.

Use in Bad Faith

Complainant can establish that Respondent used the Disputed Domain Name in bad faith by showing the Disputed Domain Name resolves to a website featuring sponsored links and pop-up advertisements. Villeroy & Boch AG v. Marino Pingerna, WIPO Case No. D2007-1912 (“Respondent’s use of the disputed domain name with the intention to attract internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website”). Complainant argues that Respondent set up the website <hgtvmagazine.com> to make money using Complainant’s marks by engaging in a “pay-per-click” advertising scheme. Complainant attached a printout of the site to which <hgtvmagazine.com> resolves, and contends that the website is “parked and used as a placeholder” with sponsored links connecting Internet users to third-party websites, some of which compete with Complainant, such as “Bon Appétit” at <bonappetit.com>.

Respondent advances several conclusory arguments as to why Respondent is not using the Disputed Domain Name in bad faith. Respondent claims that the Disputed Domain Name could not possibly have the effect of disrupting Complainant’s business because Respondent and Complainant are not competitors. But domain names that are used to generate sponsored links may be considered to be used in bad faith, in appropriate circumstances, regardless of whether the respondent is a competitor. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353. Respondent also argues that the Disputed Domain Name is not yet active and that when it is activated, it will not use pay per click schemes.

Respondent fails to adequately rebut – or indeed even motion – the evidence Complainant offers, and in particular the printout demonstrating the existence of sponsored links at <hgtvmagazine.com>. Respondent does not respond to Complainant’s argument or address why <hgtvmagazine.com> was once active, featuring nothing but sponsored links, but is no longer active. In light of Respondent’s failure to address the sponsored links to third-party websites such as “Bon Appétit” at <bonappetit.com> and failure to offer any explanation for the printout submitted by Complainant, the Panel finds that Respondent has not rebutted Complainant’s showing of bad faith, and concludes that Respondent was using the Disputed Domain Name as a placeholder with sponsored links and advertisements which constitutes use in bad faith.

The Panel finds that Respondent both registered and used the Disputed Domain Name in bad faith.

7. Decision

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, <hgtvmagazine.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Dated: February 8, 2011