WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cable News Network, Inc. v. Shahin Al Manun
Case No. D2019-2085
1. The Parties
The Complainant is Cable News Network, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Shahin Al Manun, Bangladesh, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cnnbangla.tv> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2019, 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 August 30, 2019, 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 amended Complaint on August 30, 2019.
The Center verified that the Complaint, together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. On September 20, 2019, the Complainant requested suspension of the proceedings. On September 23, 2019, the Center suspended the proceedings. On October 23, 2019, the Complainant filed a supplemental filling. On October 28, 2019, the Complainant requested reinstitution of the proceedings. On October 30, 2019, the Center reinstituted the proceedings, setting the Response due date to November 4, 2019. Two informal email communications from the Respondent were received by the Center on August 31 and September 5, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on November 5, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on November 22, 2019. 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 a United States broadcasting corporation founded on June 1, 1980, and based in Atlanta, Georgia.
As a leading 24-hour news and information worldwide cable television network, the Complainant provides live coverage and analysis of breaking news, as well as a full range of international, cultural, political, business, entertainment, sports, health, science, and wealth coverage, and topical in-depth interviews, reaching more than 90 million pay-television households and more than 890,000 hotel rooms in the United States.
As of July 2019, the Complainant was the third most-watched cable news network in the United States by number of daytime and prime-time viewers (approximately 797,000 during prime-time). Millions of viewers watch CNN annually, relying on CNN’s global team of over 3,000 news professionals.
It also launched various spin-off networks in the United States and globally, including: CNN Airport; CNN Chile; CNN en Español; CNN International; CNN TÜRK; CNN-IBN (India); CNN Indonesia; CNNj (Japan); and CNN Philippines. CNN International first started broadcasting on September 1, 1985, and is carried by numerous television channels around the world.
In addition to its United States headquarters and various United States-based offices, the Complainant also has regional headquarters in Abu Dhabi, Hong Kong, and London, and other bureau locations in, inter alia, Bangkok, Beijing, Berlin, Istanbul, Jakarta, Madrid, Mexico City, Moscow, Mumbai, Paris, Rio de Janeiro, Rome, Seoul, and Tokyo.
The Complainant is the owner of several trademark registrations for both word and figurative CNN trademarks, in many jurisdictions throughout the world, including the United States and Bangladesh. Such registrations include, but are not limited to, the following, as per registration certificates submitted as annexes to the original Complaint:
- United States trademark No. 1597839 for CNN (figurative mark), registered on May 22, 1990, claiming first use in commerce in 1985, in International class 38;
- United States trademark No. 2903197 for CNN (word mark), registered on November 16, 2004, claiming first use in commerce in 1985, in International class 38;
- United States trademark No. 3649844, for CNN (figurative mark), registered on July 7, 2009, claiming first use in commerce in 1993, in International class 25;
- Bangladesh trademark No. 35889 for CNN (figurative mark), filed on September 15, 1992, in class 16;
- Bangladesh trademark No. 116822, for CNN (figurative mark), filed on July 13, 2008, in class 38.
The Complainant, either directly or through its parent entity, Turner Broadcasting System, Inc., or other affiliated entities, also owns numerous domain names that include the trademark CNN. Many such domain names resolve to the Complainant’s primary website, which is published at the domain name <cnn.com>, registered on September 22, 1993.
The disputed domain name <cnnbangla.tv> was registered on July 25, 2017 and resolves to a website promoting an alleged Bengali news portal and online newspaper.
5. Parties’ Contentions
The Complainant contends that disputed domain name <cnnbangla.tv> is confusingly similar to the trademark CNN in which it has rights, as it reproduces the trademark in its entirety with the mere addition of the geographical term “bangla” (which would be an abbreviation of “Bangladesh”) and the generic Top-Level domain (“gTLD”) “.tv”.
The Complainant highlights that the term “bangla” included in the disputed domain name indeed enhances confusing similarity with its trademark, since it bluntly implies an authorized online source for the Complainant’s services in Bangladesh.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
- the Respondent has never been authorized by the Complainant to use the CNN or any other CNN-formative marks in any manner, much less as part of the disputed domain name;
- the disputed domain name was registered well after the Complainant registered its CNN trademarks and had established extensive goodwill worldwide;
- the disputed domain name does not reflect the Respondent’s common name;
- the Respondent is using the disputed domain name to infringe and cybersquat upon the Complainant’s rights in its globally famous and well-known CNN trademark, including in Bangladesh, where the Complainant has owned valid, subsisting and well-known trademark rights since 1992.
- the Respondent has also selected and used an email contact that features the CNN trademark, i.e., cnnbdtv@[...].com;
- the disputed domain name resolves to a website providing content that attempts to compete directly with the content provided by the Complainant under its CNN trademarks;
- the disputed domain name <cnnbangla.tv> contains embedded web traffic monetization through the use of the Google Ads Platform;
- the use of the disputed domain name does not constitute any legitimate bona fide sale of goods or services;
- the Respondent’s use of the disputed domain name in connection with a monetized website that directly competes with the Complainant’s news and information related services under the CNN trademarks does not constitute legitimate noncommercial or fair use;
- the acronym “cnn” used in the disputed domain name, is so closely associate with the Complainant that there can be no credible and legitimate intent that would not capitalize on the reputation and goodwill inherent in the Complainant’s CNN trademarks.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, due to the notoriety and goodwill worldwide of the CNN trademarks, it is highly unlikely that the Respondent was unaware of the Complainant at the time of registration of the disputed domain name. The Complainant highlights that the Respondent is redirecting the disputed domain name to a website which purports to provide news and information content which directly competes with the Complainant’s own news and information related services provided under the CNN trademarks. The Complainant emphasizes that such activity is disruptive to its business, as the Respondent is diverting Internet users seeking legitimate content provided by the Complainant to the Respondent’s illegitimate website, providing opportunities for monetization by the Respondent of additional web traffic that otherwise would and should be directed to the Complainant.
The Complainant underlines that both registration and use of the disputed domain name constitute bad faith as the website was designed for monetization and intended to attract users for commercial gain by creating a likelihood of confusion with the CNN trademarks. The Complainant thus requests that the disputed domain name be transferred to the Complainant.
The Respondent did not file a formal Response but only sent two informal email communications to the Center, one of which stated:
“HI. We are from CNN BANGLA TELEVISION. DHAKA- Bangladesh. Our Web Address is : cnnbangla.tv. In the case of matter , Web conflict. We drop Our proper documents. Please see the attachments. Our all Documents is attach this e-mail, Please verify that. From Cnn bangla Television Dhaka - Bangladesh”.
The Respondent submitted the following documents to support its assertions:
- copy of a trademark application form, filed with the competent Trademark Office in Bangladesh on February 20, 2018, for a figurative trademark including the denominative elements “cnn” and “tv” and device elements;
- an excerpt of the articles of association and copy of the certificate of incorporation, dated October 4, 2018, of a company named Central National Network Bangla Ltd, located in Bangladesh.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and 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 the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 Panel finds that the Complainant has established rights over the trademark CNN based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 6 to the original Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0).
In the case at hand, the Complainant’s trademark CNN is entirely reproduced in the disputed domain name, with the addition of the non-distinctive term “bangla”, which clearly recalls Bangladesh and, according to the Collins dictionary, is a synonym of Bengali, the official language spoken in such country1 . In addition, the gTLD “.tv” is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 non-commercial 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to rebut the Complainant’s prima facie case in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Shahin Al Manun, might be commonly known by the disputed domain name.
As mentioned above, the Respondent claimed to operate as a television channel approved by the Bangladesh Government under the name “Cnn bangla Television Dhaka – Bangladesh”. In order to substantiate its assertions, the Respondent submitted copies of a trademark application for a figurative mark including the trademark CNN, which was filed in Bangladesh in February 2018, and of documents certifying the incorporation, in the same country, of a company named Central National Network Bangla Ltd, dated October 2018.
The Panel notes that both the trademark application and the description of the company’s activity in the articles of association of the above-cited company include services identical to the ones that the Complainant has been providing also in Bangladesh under the registered and well-known trademark CNN, since several years before 2018.
Moreover, while the Complainant does not address whether the trademark application is being challenged, the Respondent did not provide evidence showing that its trademark application was, in fact, granted, and the Panel could not find any reference to the Respondent’s name in the excerpts of the articles of association and certificate of incorporation submitted by the Respondent; in any event, given the obvious bad faith conduct described therein, this application cannot cure that.
The Panel also notes that the disputed domain name is being pointed to a website promoting purported news services like the ones provided by the Complainant under the domain name <cnn.com> and displaying a logo similar to the one registered and used by the Complainant for the same services.
In view of the above, the Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services, since the circumstances of the case suggest that the Respondent, on balance of probabilities, registered and used the disputed domain name to trade upon the fame of the Complainant’s trademark.
In addition, the Panel also finds that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use, since the Respondent has clearly aimed at gaining revenues e.g., from the sponsored Google Ads advertisements embedded in the website published at the disputed domain name.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As to the bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the trademark CNN by the Complainant also in Bangladesh, where the Respondent is based and the Complainant’s trademark has been registered since 2000, the Respondent was or ought to be aware of the CNN trademark at the time of registration of the disputed domain name, which occurred in 2017.
Moreover, the Respondent’s direction of the disputed domain name to a website displaying a logo similar to the one of the Complainant and providing news services identical to the ones of the Complainant suggests that the Respondent was indeed well aware of the Complainant’s trademark.
In view of the above and of the well-known character of the Complainant’s trademark CNN worldwide, the Panel finds that the Respondent acted in opportunistic bad faith and registered the disputed domain name with the deliberate intent to create an impression of an association with the Complainant.
See, along these lines, Cable News Network, Inc. v. Chowdhury Lokman, Chittagong news network, WIPO Case No. D2018-2737 (“Given the fame of the Trade Mark, the nature of the Disputed Domain Name, and the content of the website at the Disputed Domain Name (including a ‘CNN Bangladesh’ logo which is similar to the Complainant’s stylized ‘CNN’ Trade Mark, and the use of Gmail email addresses which incorporate the Trade Mark), the Panel considers it highly likely that the Respondent had knowledge of the Complainant and the Trade Mark at the time he registered the Disputed Domain Name. The Respondent likely registered the Disputed Domain Name for the sole purpose of trading off the Complainant’s goodwill and reputation in the Trade Mark”).
The Panel finds that, in light of the use of the disputed domain name in connection with a monetized website that directly competes with the Complainant’s news and information related services under the CNN trademark, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds paragraph 4(b)(iii) of the Policy to be applicable in the present case, since the Respondent’s conduct through the use of the disputed domain name is apt to disrupt the Complainant’s business.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <cnnbangla.tv> be transferred to the Complainant.
Date: December 9, 2019
1 See www.collinsdictionary.com/dictionary/english/bangla