WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox Media Group Northeast, LLC v. Contact Privacy Inc. Customer 1246770746 / Bill Gage
Case No. D2020-1160
1. The Parties
Complainant is Cox Media Group Northeast, LLC, United States of America (“United States” or “US”), represented by Kilpatrick Stockton, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1246770746, Canada / Bill Gage, United States.
2. The Domain Name and Registrar
The disputed domain name <bostom25.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2020, 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 Complainant on May 19, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 26, 2020.
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 Respondent of the Complaint, and the proceedings commenced on May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2020.
The Center appointed Anne Gundelfinger as the sole panelist in this matter on July 6, 2020. 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 Cox Media Group Northeast, LLC based in Atlanta, Georgia and owner of the broadcast television station WFXT-TV which is known as channel 25 and which serves the greater Boston metro area under the trademark and service mark BOSTON 25 (the “Mark”). Complainant has used the Mark since April 2017 in connection with these broadcast TV services, associated mobile apps, and an associated website found at “www.boston25news.com”.
Complainant owns a registration on the U.S. Supplemental Register for the service mark BOSTON 25 for a range of broadcasting, news, and related services in Classes 38, 41, and 42 (U.S. Reg No. 5,830,418). The registration for the Mark issued August 6, 2019 with the date of first use in commerce of April 24, 2017.
Complainant’s affiliated company Cox Media Group, Inc. registered the domain name <boston25news.com> in April of 2017 and the domain name <boston25.com> in March of 2017. The domain name <boston25.com> redirects to the website found at “www.boston25news.com”.
The disputed domain name was registered on March 26, 2020 by Respondent using the privacy service Contact Privacy Inc. The disputed domain name currently resolves to an inactive webpage.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its established BOSTON 25 Mark because the disputed domain name is identical to the Mark with the exception of replacing the “n” with an “m”. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
In support of these contentions, Complainant has submitted persuasive unrebutted evidence establishing the following points:
- Complainant owns the broadcast TV station WFXT-TV (the “Station”) serving the greater Boston metropolitan area. Complainant and its predecessors, affiliates, and licensees (all collectively referred to as “Complainant”) have offered goods and services in connection with the Station for over thirty years. Since its launch in 1977, the Station has been known as channel 25, and has born various service marks based on the channel number “25”, including FOX 25, FOX 25 BOSTON, FOX WFXT BOSTON, and FOX 25 UNDERCOVER. As early as 1996, Complainant launched a website using domain names based on the channel number “25”, including the domain name <fox25.com>.
- In April 2017, Complainant adopted and began using the BOSTON 25 Mark in connection with the Station, and also launched “www.boston25news.com” (the “BOSTON 25 Website”) as its primary website in promoting and providing information about the Station and its programming and news. Around that same time, Complainant began use of the domain name <boston25.com>, which redirects to Complainant’s BOSTON 25 Website.
- Complainant also offers two free BOSTON 25 software apps, namely “Boston 25 News” and “Boston 25 Weather”, in connection with the Station, providing consumers with news, weather information, and videos specific to the Boston metro area. The mobile apps are available on iOS and Android.
- Complainant uses the BOSTON 25 Mark on numerous social media websites, including Facebook (nearly 1 million likes), Twitter (337,000 followers), and Instagram (148,000 followers).
- Over the years, Complainant has expended substantial sums marketing and promoting services and goods in connection with the Station and its associated BOSTON 25 Mark, and Complainant has sold millions of dollars of advertising under the marks. In 2019 alone, Complainant spent nearly USD 1 million on marketing for the Station under the BOSTON 25 Mark and engaged in on-air promotions valued at over USD 4.4 million.
- The Station has also been the recipient of many awards for its excellence in broadcasting and programming. For example, the Station won six New England Emmy Awards in 2017 and 10 New England Emmy Awards in 2018. In addition, in 2019, the Station won the National Murrow Award for Excellence in Social Media.
- Due to its extensive promotion, popularity, and success, Complainant’s Station, as well as its BOSTON 25 Website, BOSTON 25 apps, and social media sites are extremely successful and popular. The Station currently reaches over 12 million viewers through its television platform and has 3.4 million OTT livestream sessions annually. In addition, in 2019, the BOSTON 25 Website had nearly 155 million page views and there were 106,000 downloads of the BOSTON 25 apps.
- As a result of Complainant’s use and promotion of its BOSTON 25 Mark, the consuming public associates the Mark with Complainant. Specifically, Complainant’s BOSTON 25 mark is readily and widely recognized in the Boston metro area as a source identifier for Complainant’s television station and associated website and apps.
- Nearly three years after Complainant commenced use of the BOSTON 25 Mark and domain names and some months after Complainant registered the BOSTON 25 Mark on the US Supplemental Register, Respondent registered the disputed domain name <bostom25.com>.
- The same day Respondent registered the disputed domain name, Respondent began using it to send fraudulent emails to businesses from “@bostom25.com” email addresses seeking payment of invoices purportedly owed to Complainant’s Station. Respondent has created at least two fraudulent email addresses using the names of at least two actual employees of Complainant and has used those email addresses to send the fraudulent emails.
- Respondent intended to mislead the email recipient as to Respondent’s affiliation with Complainant and the Station, as evidenced by (i) Respondent’s use of fraudulent email addresses nearly identical to that of the Station’s employees’ real email addresses, (ii) Respondent’s inclusion of “(CMG-BOSTON)” beside the name of Complainant’s employee’s name, and (iii) Respondent’s inclusion of the BOSTON 25 and COX MEDIA GROUP logos and the real email address of Complainant’s employee in the signature block of the email. Further, the evidence indicates that Respondent modified the appearance of the fraudulent “@bostom25.com” email address so that it appeared as the authentic “@boston25.com” email address of Complainant’s employee.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights; (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
A threshold issue in this case is whether Complainant established rights in the BOSTON 25 Mark prior to the Respondent’s registration of the disputed domain name. See, section 1.2.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The BOSTON 25 Mark is registered on the U.S. Supplemental Register which is reserved for marks that are considered not distinctive at registration but which may acquire secondary meaning through use. Complainant contends that the consuming public associates the Mark with Complainant as a result of its longstanding use and extensive promotion and sales of goods and services in connection with its “25” family of marks, including the BOSTON 25 Mark. Specifically, Complainant contends that the BOSTON 25 Mark is readily and widely recognized in the Boston metro area as a source identifier for Complainant’s television station.
The Panel agrees that Complainant has submitted sufficient evidence (summarized above) of use and promotion of the Mark to establish valid and enforceable rights. The “25” designation has been in use consistently for over 30 years in connection with the Station, and the BOSTON 25 Mark has been in use for over three years in connection with the Station and its associated website and apps. Many millions of viewers and users have regularly encountered the Mark on TV and on the web. While the Mark may not be an inherently strong mark given the descriptiveness of the “BOSTON” element, there is no doubt that through continuous and extensive use it has become a source identifier for Complainant’s Station, at least within the Boston metro area. See, Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653; Section 1.2.2 of WIPO Overview 3.0.
The remaining issue is whether the disputed domain name is identical or confusing similar to the BOSTON 25 Mark. The disputed domain name <bostom25.com> differs from Complainant’s BOSTON 25 Mark and domain name by only one letter – the letter “n” has been replaced with the letter “m”. Such a minor alteration is insignificant, doing nothing to obviate the confusing similarity between the disputed domain name and the BOSTON 25 Mark, particularly given that the letter “m” is highly similar in sight and sound to the letter “n” and is also adjacent on a standard QWERTY keyboard to the letter “n”. Indeed, this appears to be a clear case of “typosquatting”. Panels have consistently found slightly misspelled domain names to be confusingly similar to the mark in question for purposes of the first element under the Policy. See, section 1.9 of WIPO Overview 3.0 and cases cited therein.
Accordingly, the Panel concludes that the disputed domain name is confusing similar to Complainant’s established mark BOSTON 25, and that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205.
Here, Complainant has asserted that it has no relationship with Respondent and has not licensed or otherwise permitted Respondent’s use of the disputed domain name, and that Complainant is not making a legitimate fair use of the name. Complainant has demonstrated with credible unrebutted evidence that Respondent has used the disputed domain name to pursue a fraudulent scheme in which it emails businesses posing as Complainant’s employee (using the disputed domain name in the email address and using the name, title, and address of an actual employee of Complainant, as well as the BOSTON 25 and COX MEDIA GROUP logos) and seeking payment of invoices purportedly owed to Complainant, all for illegitimate financial gain. Of course, such use can never give rise to any right or legitimate interest on the part of Respondent in the disputed domain name. See, section 2.13 of the WIPO Overview 3.0. Moreover, such use establishes Respondent’s clear knowledge of Complainant’s rights and Respondent’s intent to target Complainant’s Mark.
In the absence of a response from Respondent, the Panel accepts Complainant’s evidence and assertions, and finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that Complainant has met its burden and that the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
The third element of the test requires a showing that the disputed domain name has been registered and is being used in bad faith. As previously concluded, the disputed domain name is confusingly similar to the Complainant’s BOSTON 25 Mark. Given this, and the fact that Respondent used the disputed domain name to send fraudulent emails impersonating an actual employee of Complainant immediately upon registration of the disputed domain name, one can only fairly conclude that Respondent was clearly aware of Complainant’s rights in the BOSTON 25 Mark when registering the disputed domain name. This suffices to establish bad faith registration. See, paragraph 4(b)(iv) of the Policy; and section 3.1.4 of the WIPO Overview 3.0. While not necessary to the finding, Respondent’s use of a privacy protection service further supports a finding of bad faith registration. See, section 3.6 of the WIPO Overview 3.0.
Turning to bad faith use, while the disputed domain name resolves only to an inactive website, the fraudulent emails that Respondent sent using the disputed domain name represent an attempt to impersonate an employee of Complainant and mislead recipients into paying invoices purportedly owed to Complainant, all for illegitimate financial gain. It is well-established that use of a disputed domain name to send deceptive or fraudulent emails constitutes use in bad faith. See, section 3.4 of the WIPO Overview 3.0; Facebook, Inc. v. WhoisGuard, Inc. / Donna E. Fleming, Mansmann’s Department Store, WIPO Case No. D2019-1777; Minerva S.A. v. Miranda Nyenhuis, WIPO Case No. D2018-0763.
Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the Policy is satisfied.
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 <bostom25.com> be transferred to Complainant.
Date: July 20, 2020