WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WBNS TV, Inc. v. Joshua Herald
Case No. D2016-0828
1. The Parties
Complainant is WBNS TV, Inc. of Columbus, Ohio, United States of America, represented by Jones Day, United States of America.
The Respondent is Joshua Herald of Columbus, Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wbns10news.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 20, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 26, 2016. 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
Complainant is the owner of registrations for the word service marks WBNS-TV and WBNS-10TV on the Principal Register of the United States Patent and Trademark Office (USPTO). The WBNS-TV mark is registered as number 2,582,101, registration dated June 18, 2002, in international class (IC) 38, covering "television broadcasting services". The WBNS-10TV mark is registered as number 2,585,225, registration dated June 25, 2002, in IC 38, also covering "television broadcasting services". Complainant also owns a registration for a word and design trademark incorporating the term 10 WBNS TV as an element.
Complainant operates a television news station in Columbus, Ohio that began operations in 1949, and that has used the same call letters throughout its history. Complainant also operates a commercial news website, principally located at "www.10tv.com", and owns a substantial number of additional domain names incorporating its mark (e.g., <wbns10.com>), many of which redirect to its principal website. Complainant also conducts commercial news operations using social media, mobile platforms, etc., generally under the WBNS-TV and WBNS-10TV marks, and variations of those marks.
Complainant is a consistent news rating leader in the Ohio area, and has won multiple television and news reporting awards.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on March 26, 2016, and the disputed domain name has been registered to Respondent since at least that date.
By his own account through correspondence with Complainant and its counsel, and as subsequently reported by local Columbus, Ohio media, Respondent as an elaborate "April Fool's Day prank": (1) registered the disputed domain name, (2) copied Complainant's commercial news website format, trademark and design elements into his own hosted website, (3) created a fictional "news" story stating that he had been arrested in Columbus for second-degree felonious complicity to manufacture methamphetamine (and related criminal charges), including staged photographs of his dwelling, being portrayed in the fictional news story as the mastermind in setting up a meth lab in his home, and (4) placing a voicemail message on his telephone stating that his phone had been disconnected. By Respondent's account in local media, he developed this plan because certain of his former work colleagues joked that he had gone off to manufacture methamphetamine as had the lead character in the television series "Breaking Bad".
Apparently because Respondent had cloned Complainant's website's look and feel, his April Fool's Day prank succeeded in persuading readers of the fictional news story, including Respondent's friends and family, that he had in fact been arrested for manufacturing methamphetamine. According to Respondent's correspondence with Complainant's counsel, he had not anticipated the extent to which the story of his prank would wind its way through the local news cycle and social media. But, the story did appear to gain at least some modest notoriety for Respondent.
Shortly after the appearance of the fictional news story, Complainant's Vice President for Corporate Security attempted to contact Respondent, but Respondent delayed his response. On April 5, 2016, Complainant's counsel transmitted a demand that Respondent take down the clone website, provide information regarding other individuals who may have participated in creating the website and news story, and provide assurance that there would be no further misuse of Complainant's intellectual property.
By email dated April 5, 2016, Respondent acknowledged Complainant's position as "the most accurate, reliable, and trusted news source in Columbus", stating "I understand and presume the nature of your concern is with the use of copyrighted materials used on the fabricated website". Respondent indicated that there were no advertisements on the website "or the video", "so absolutely no monetary gains can be attributed to the story. Additionally, it is the only story on the website, as no actual 10TV written stories were used". Finally, Respondent said "please advise on how to proceed with the domain itself, 'www.wbns10news.com'".
Additional correspondence follows, with Respondent promptly assuring Complainant that all content has been removed from the website. Complainant's counsel indicates that it will provide instructions regarding transferring the disputed domain name, and by email of April 7, 2016, Complainant's counsel provides instructions for obtaining from the Registrar a Transfer Authorization Code to enable the transfer to Complainant.
By email dated April 7, 2016, Respondent advises Complainant's counsel that Complainant may purchase the disputed domain name at auction from the Registrar. By email dated April 7, 2016, Complainant's counsel indicates there must be some misunderstanding, that Complainant had no intention of purchasing the disputed domain name from Respondent. By email dated April 7, 2016, Respondent states:
I understand your client's request. However, certain production costs were attributed to the acquisition and use [of] the aforementioned domain. Thus, those should be recovered in the transference of the domain. I'm proposing for your client to purchase the domain…as a mutually least expensive option regarding litigation costs. Further, it is GoDaddy's policy to lock the transfer of newly registered names for a few months, so I am unable to generate a transfer code until that period has expired. However, purchased domains are transferred instantly though GoDaddy.
I hope we can reach a mutually beneficial agreement. Let me know how you'd like to proceed. Thank you.
The alternative "Buy It Now" price for the disputed domain name through the Registrar's auction is USD 500. Complainant's initiation of this proceeding follows.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it owns rights in the service marks WBNS-TV, WBNS-10TV, and related combination service marks (denominated by Complainant as the "WBNS Marks") established through long use in commerce in the United States, and as evidenced by registration at the USPTO.
Complainant contends that the disputed domain name is confusingly similar to its service marks.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent is not known by the disputed domain name; (2) Respondent has not been authorized by Complainant to use the WBNS Marks; (3) Respondent is not using the disputed domain name in connection with a bona fide offer of goods or services; (4) Respondent has not made a legitimate noncommercial or fair use of the disputed domain name because use of the disputed domain name to post a false news story does not constitute fair or legitimate use, citing to Scarlett Johansson v. Tristan Dare, WIPO Case No. D2008-1650 for the proposition that use of a third-party trademark as part of a joke or prank is not considered fair or legitimate use within the meaning of the Policy, and; (5) Respondent was clearly aware of Complainant's service mark rights when he registered the disputed domain name since Respondent has acknowledged that he registered the disputed domain name to take advantage of Complainant's reputation.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name to take advantage of the reputation and goodwill of Complainant by extensive use of Complainant's WBNS Marks and copyrighted video footage throughout his website; (2) Respondent registered the disputed domain name for commercial gain even if he did not directly profit from use of his website because Respondent intended to and received a commercial benefit by the fame and notoriety gained from his use of Complainant's service marks, enhancing his commercial reputation among prospective customers of his freelance video editing services; (3) Respondent has expressly promoted his video and editing services, as evidenced by interviews and other media remarks; (4) Respondent's refusal to transfer the disputed domain name to Complainant absent payment of USD 500 is evidence of Respondent's bad faith as that amount substantially exceeds his out-of-pocket costs expended in connection with registering the disputed domain name; (5) while Respondent may initially have intended to use the disputed domain name for a prank, his intentions quickly changed once it became clear he might profit from his registration; (6) the list of bad faith practices in the Policy is illustrative, not exhaustive, and Respondent has clearly demonstrated he intended to profit from and exploit the fame of Complainant's WBNS Marks for personal gain, willfully, in bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent by email and express courier (no fax number was included in the record of registration). The express courier delivery record indicates that the courier made several attempts to deliver the Complaint to the address included in Respondent's record of registration, but that there was no response at that address. Respondent received emails from Complainant's counsel at the email address included in his record of registration, and the Complaint was transmitted by the Center to that same email address. There is no indication that there was difficulty in connection with email transmission. The Center followed the procedures for notification established by the Rules. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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
Complainant has provided evidence of long use in commerce in the United States of the service marks WBNS-10TV and WBNS-TV, and has provided evidence of ownership of registration of those service marks at the USPTO (see Factual Background supra). Registration on the Principal Register of the USPTO establishes a presumption of rights in favor of Complainant, and Respondent has not challenged those rights. The Panel determines that Complainant owns rights in the service marks WBNS-10TV and WBNS-TV (the "WBNS marks").
The disputed domain name, <wbns10news.com>, directly incorporates the distinctive "WBNS10" element of Complainant's WBNS-10TV service mark, substituting "news" for "TV". Complainant's principal service is the reporting of news. There is a strong visual similarity between the disputed domain name and Complainant's service mark. Respondent's word substitution identifies the principal line of business for which Complainant is known by consumers. Internet users viewing the disputed domain name are likely to assume that Complainant is the source or sponsor of Respondent's website. Respondent has acknowledged that in registering the disputed domain name he was attempting to take advantage of the reputation and goodwill of Complainant. The Panel determines that the disputed domain name is confusingly similar to Complainant's WBNS marks.
The Panel has determined that Complainant owns rights in the WBNS marks, and that the disputed domain name is confusingly similar to those marks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests ("you" refers to the respondent):
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not presented evidence that might rebut the prima facie showing by Complainant.
The use made by Respondent of Complainant's service marks in the disputed domain name does not constitute legitimate noncommercial or fair use of Complainant's service marks. Respondent has not directed any commentary or criticism toward Complainant such that the disputed domain name might be considered legitimately used for those purposes.1 Respondent is not making fair use of the disputed domain name in the sense of engaging in some form of transformative parody of Complainant's work. Compare, e.g., Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693. Respondent has appropriated Complainant's service mark, reputation and appearance for his own purposes without regard to Complainant or its legitimate interests.
Playing a "joke" or "prank" is not a defense to abuse of the service mark rights of a third party such as to establish rights or legitimate interests. In the present circumstance, Complainant is an established news source that its viewer/reader community relies on for the accuracy of its reporting. Complainant maintains a trust relationship with the community it serves. By taking over Complainant's "personality" in the form of replicating its website, Respondent places the reliability of information on Complainant's media outlets in doubt.
It might be argued that a one-off event such as Respondent's creation of a fictitious replicant of Complainant's website is not sufficient to cause lasting harm to Complainant. But, if the principle that taking over a third party's identity for the purposes of disseminating false information is accepted, it would be difficult to begin line drawing between "innocent", "dangerous" and "malevolent" pranks. Even in the present case, Respondent has conceded in the press that members of his family were not entirely enthusiastic about his prank, and that persons in the neighborhood where his "fictional" methamphetamine manufacturing facility is located expressed concern.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or…(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
Respondent registered the disputed domain name with full knowledge of Complainant's service marks and with the intention of taking advantage of Complainant's reputation and goodwill as a news provider in his community. Afterward, Respondent told a local reporter that he intended to send WBNS his resume, given his demonstrated skills in video and editing. (Erica Thompson, "People: Joshua Herald's epic April Fool's Day prank", columbusalive.com, April 21, 2016). Respondent has for commercial gain intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship affiliation or endorsement of Respondent's website.
Rather than transferring the disputed domain name to Complainant as he initially appeared willing to do, Respondent decided that he should sell the disputed domain name to Complainant to recover his expenses of taking unfair advantage of Complainant's service marks. It is evident why Complainant did not take Respondent up on this offer, given the likelihood that the ultimate result in the local press would be reports that Complainant ended up paying Respondent for his prank. While Complainant may have saved money by paying Respondent what he demanded, it is understandable that Complainant considered that initiating this proceeding was the more appropriate course of action.
Respondent's conduct may suggest that he decided to sell the disputed domain name to Complainant for a price in excess of his out-of-pocket costs directly relating to the domain name after he undertook his prank. The list of bad faith elements paragraph 4(b) is illustrative, not exhaustive. In the present circumstances Respondent's decision to refuse transfer of the disputed domain name to Complainant absent a substantial payment in excess of his out-of-pocket expenses directly related to the disputed domain name constitutes bad faith registration and use within the meaning of the Policy.
Based on its determination that Complainant has established all three elements necessary for a finding in its favor, the Panel will direct the Registrar to transfer the disputed domain name to Complainant.
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 <wbns10news.com> be transferred to Complainant.
Frederick M. Abbott
Date: June 6, 2016
1 The Panel need not address here the circumstances or conditions where such use might be legitimate.