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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Showtime Networks Inc. v. ICS inc. / Contact Privacy Inc. Customer 0134067416

Case No. D2013-1234

1. The Parties

The Complainant is Showtime Networks Inc., New York, New York United States of America, represented by CBS Law Department, United States of America.

The Respondent is ICS inc., Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. / Contact Privacy Inc. Customer 0134067416, Privacy Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name is <shotimeanytime.com> registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2013, 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 July 15, 2013 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 amendment to the Complaint July 15, 2013.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 23, 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 is an American company engaged in the television sector. Furthermore, the Complainant is the holder of; inter alia, the following federal trademark registrations in the United States of America:

- SHO, registration no. 2,496,208, registered for services in class on October 9, 2001.

- SHOWTIME, registration no. 1,075,211, registered for goods and services in classes 38 and 41 on October 11, 1977.

- SHOWTIME ANYTIME, registration no. 3,949,035, registered for services in class 38 on April 19, 2011.

The disputed domain name was registered on February 13, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant is a leading provider of television program services in the United States of America and owns and operates the television network Showtime, as well as the multiplex channels Sho 2, Showtime Showcase, Sho Extreme, Sho Beyond, Sho Next, Sho Women and Showtime Family Zone.

The Complainant has trademark rights in; inter alia, SHO, SHOWTIME and SHOWTIME ANYTIME. For more than 38 years, the Complainant has used these trademarks in interstate commerce to identify its television services and related goods and services. The Complainant has invested a substantial sum of money advertising and promoting its services under its trademarks, which has resulted in the creation of significant goodwill and popularity for the trademarks. The Complainant’s television services, as well as its production of original entertainment programming have become well-known to the public and within the entertainment industry, and the Complainant’s trademarks have become famous. In addition, the trademarks have become extremely valuable symbols of the Complainant.

Furthermore, the Complainant maintains a strong presence on the Internet, including ownership and operation of websites such as “www.sho.com” and “www.showtimeanytime.com” which provide information about the Complainant’s entertainment programming, scheduling and other services. The Complainant also owns and operates a variety of iPhone, iPad and Android applications featuring its trademarks. As early as in 2010, the Complainant launched its online service under the trademark SHOWTIME ANYTIME, which provides instant access to the Complainant’s entertainment programming via the Internet.

On or about February 13, 2012, long after the Complainant commenced use of its trademarks, the Respondent registered the disputed domain name. The Respondent has since used the disputed domain name to direct Internet visitors to sites that contain links to various products or services that are not affiliated with, and in several instances, directly compete with the Complainant’s services. The Respondent derives “pay-per-click” revenue whenever an Internet user clicks on one of the sponsored or advertised links.

After discovering the Respondent’s registration of the disputed domain name, the Complainant transmitted to the Respondent a letter dated August 27, 2012, requesting the Respondent to cease using the disputed domain name and transfer it to the Complainant. The Respondent never responded to the letter.

The disputed domain name is confusingly similar to the Complainant’s trademarks. In fact, the disputed domain name consists of the Complainant’s trademark in its entirety, despite the use of the generic Top-Level Domain (gTLD) “.com”, which has been deemed irrelevant for purposes of trademark infringement analysis. See, e.g., CBS Radio, Inc. v. 102.7WEBN Radio, WIPO Case No. D2000-1063. Furthermore, the similarity of the disputed domain name and the Complainant’s live website “www.showtimeanytime.com” is set out to take advantage of a user’s mistake in omitting the letter “w” in the Complainant’s domain name and thus constitutes “typo-squatting”. See Easygroup IP Licensing Limited v. John Sansone, WIPO Case No. D2004-0763, in which the panel found that the mere misspelling of the Complainant’s trademark was insufficient to prevent the panel from finding the <easyejt.com> domain name confusingly similar to the EASYJET trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Complainant granted any permission or consent to the Respondent to use the Complainant’s trademarks or any other mark confusingly similar thereto. The Respondent is not commonly known by the names “Showtime, Shotime”, “Showtime Anytime or Shotime Anytime”. Furthermore, the Respondent has not made any legitimate offering of goods or services in connection with the disputed domain name and is not making any noncommercial or fair use of it. Panels have consistently recognized that where, as in the case here, a respondent uses a domain name to trade on the goodwill of a complainant’s trademark and to divert Internet users to a website with pay-per-click or click-through links to products or services that are not affiliated with the complainant, the respondent has no rights or legitimate interests in respect of the disputed domain name. See, e.g., CBS Broadcasting Inc. v. US address, WIPO Case No. D2010-0322.

Moreover, the Complainant’s use and registrations of its trademarks predate the Respondent’s registration of the disputed domain name. Given the Complainant’s long use of and recognition associated with its trademarks, it is inconceivable, that the Respondent was not aware of the Complainant’s trademark rights before registering the disputed domain name. Under these facts, panels have held that it is inconsistent for a respondent to have rights or legitimate interests in a domain name. See, e.g., The American Automobile Association, Inc. v. Conrad Cook, WIPO Case No. D2009-0191.

The disputed domain name was registered and is being used in bad faith. Despite the large number of domain names available, the Respondent chose a domain name that is confusingly similar to the Complainant’s trademarks. Given the fame and world renown of the Complainant’s trademarks and the fact that the Complainant’s registrations predate the Respondent’s registration of the disputed domain name, the Respondent clearly knew or should have known of the Complainant’s registrations prior to registering the disputed domain name. The circumstances of this case suggest that the Respondent chose a domain name that was confusingly similar to the Complainant’s trademarks precisely because of the long term use, widespread popularity of, and commercial magnetism associated with the Complainant’s trademarks.

Through its registration and use of the disputed domain name, the Respondent has prevented the Complainant from using it. The Respondent’s actions were undertaken in bad faith, primarily for the purpose of disrupting the business of the Complainant and to prevent the Complainant from making use of its own trademarks. Through the registration of the disputed domain name, the Respondent is attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its sites.

The Respondent’s bad faith is further illustrated by the fact that the disputed domain name redirects to various third party websites with pay-per-click links to sites with products or services that are competitive with and/or unrelated to the Complainant. The outcome is the same regardless of whether the Respondent had

any direct influence over what links are chosen on the webpage, and regardless of whether the links are for and services that directly compete with, or are simply not related to, the Complainant.

Moreover, the Respondent has offered the disputed domain name for sale at “www.Godaddy.com”. The price of which to “buy it now” is USD 14,539.00. The Respondent is well aware that this demand of valuable consideration is well in excess of the Respondent’s out-of-pocket costs directly related to the domain name. This fact also underscores the Respondent’s bad faith in registering the disputed domain name, see Section 4 of the Policy.

The Respondent’s use of a private registration service to shield its true identity likewise supports a finding that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the holder of; inter alia, the American federal trademark registrations for SHOWTIME ANYTIME and SHO.

The disputed domain name consists of the words “showtime anytime”, except for the letter “w”, with the addition of the gTLD “.com”. According to well-established consensus among UDRP panels, the gTLD is generally not distinguishing. The Panel finds that the difference between the disputed domain name and the SHOWTIME ANYTIME trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy.

In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s SHOWTIME ANYTIME trademark in the meaning of paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2. 0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name.

Having considered the submissions of the Complainant, and the absence of any response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s SHOWTIME ANYTIME trademark in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The disputed domain name was registered on February 13, 2012, which is about ten months later than the Complainant’s trademark registration of SHOWTIME ANYTIME. According to the Complainant’s uncontradicted information, the Complainant launched its online service under the trademark SHOWTIME ANYTIME in 2010 and the Complainant’s SHOWTIME and SHO trademarks was registered as early as in 1977 and 2001.

Furthermore, the Respondent has stated that the Respondent has offered the disputed domain name for sale at “www.Godaddy.com” to a price of USD 14,539.00. It is highly probable that the requested consideration is in excess of the out-of-pocket costs directly related to the disputed domain name. This is further evidence of bad faith. All in all, it is not probable that the Respondent has selected the disputed domain name including the trademark SHOWTIME ANYTIME without knowledge of the Complainant’s trademark rights and business.

Thus, it is in this Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location, as per paragraph 4(b)(iv) of the Policy.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.

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 <shotimeanytime.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: September 3, 2013

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