WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBC Universal, Inc. v. Web Advertising, Corp. a/k/a Maison Tropicale S.A.
Case No. D2008-0865
1. The Parties
The Complainant is NBC Universal, Inc., New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Web Advertising, Corp. a/k/a Maison Tropicale S.A., Nassau, Bahamas and The Valley, Anguilla, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Names and Registrars
The disputed domain name <nbcboston.com> is registered with BelgiumDomains, LLC. The disputed domain name <nbcdfw.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 5, 2008, the Center transmitted by email to BelgiumDomains, LLC and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On June 5, 2008, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Also, on June 5, 2008, DomainDoorman, LLC 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”), 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on July 8, 2008. 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 well known media and entertainment company involved in the development, production and marketing of entertainment, news and information to a global audience. The Complainant owns and operates a portfolio of news and entertainment networks, a motion picture company, television production operations, a television stations group, world-renowned theme parks and dedicated websites.
The Complainant owns and operates the well-known NBC television network initially formed as a national radio network in 1926. The network has now evolved to become one the top four television networks in the United States of America.
The Complainant’s NBC trademark is registered in more than sixty-five countries. It has numerous trademark registrations in the United States of America for the NBC mark dating back to January 1956.
The Respondent registered the disputed domain names on December 6, 2005 and January 15, 2007 respectively.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent’s domain names are identical to and confusingly similar with the Complainant’s famous NBC name and mark because they fully incorporate the NBC name and mark. According to the Complainant, the mere addition of the geographic or city names “Boston” and “dfw” (initials for the Dallas-Fort Worth area of Texas) is of no importance, particularly as it is well known that the Complainant’s NBC television network consists of over 200 affiliated stations in the United States of America, including in all major U.S. cities. The Complainant uses the decisions in the following cases to support its contentions: Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Microsoft Corporation v. Webbangladesh.com, WIPO Case No. D2002-0769; Harrods Limited v. John Griffin, WIPO Case No. D2002-0641; The Prudential Insurance Company of America v. Sheri Jones, NAF Case No. FA584625, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 and PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561.
Given the unique character and worldwide renown of the NBC mark, as well as the Complainant’s use of its mark in combination with geographic identifiers to describe its regional affiliates, the Complainant claims that there can be no doubt that consumers on seeing the domain names will reasonably believe that the domain names are related to the Complainant. Moreover, consumers who search the Internet for the Complainant by using the Complainant’s NBC name and/or mark, and an associated city name, may be directed to the Respondent’s domain names, thereby creating a likelihood of confusion.
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the domain names because the Complainant’s mark is so well known and recognized. Cases supporting the Complainant’s view include Allee Willis v. NetHollywood, WIPO Case No. D2004-1030 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397.
The Complainant states that there is no relationship between it and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s NBC mark. Neither of the domain names are, nor could they be contended to be, a name or nickname of the Respondent, nor are they in any other way identified with or related to any rights or legitimate interests of the Respondent.
According to the Complainant, the Respondent has registered and is using the domain names solely for commercial gain. When an Internet user types into a browser the address of either of the domain names, the user is connected to a search engine and linking portal. The user also receives a variety of “popup” and/or “popunder” advertising. The search engines and linking portals located at the domain names display a number of links that offer everything from television and news channel information, to regional events and entities, to dating and diet services. There are also links featuring the Complainant’s NBC mark. However, rather than linking to a legitimate website of the Complainant, in almost every case the web pages accessed from these links offer and/or advertise goods and services unrelated or competitive to the Complainant or the Complainant’s products or services.
The Complainant believes that the Respondent derives a financial benefit from the web traffic that is diverted through the domain names in the form of click through revenue, and from the “popup” or “popunder” advertising that is displayed in connection with the domain names. The “popup” or “popunder” advertising delivery appears to be operated by CPX Interactive, an online advertising network company that pays the domain name holder, as “publisher,” revenue for traffic generated through the domain names. Consequently, the Respondent has registered and is using the domain names not for any legitimate noncommercial or fair-use purpose, but rather to profit from the web traffic generated through the domain names.
The Complainant contends that bad faith registration and use is established by the fact that the domain names completely incorporate the Complainant’s NBC mark and were acquired long after this mark became famous and that the Respondent is using the domain names to divert web traffic to linking portals for profit.
Finally, the Respondent’s bad faith is only strengthened by its well established pattern of registering and using domain names incorporating the trade names and/or marks, or variations thereof, of third parties to redirect Internet users to linking portals for profit. The Respondent is a known cybersquatter of domain names reflecting the marks and names owned by such well known commercial entities as General Electric Co., Anheuser-Busch, Starwood Hotels & Resorts, Nationwide Mutual Insurance Company, Sanofi-Aventis, the Dannon Company and Confederation Nationale du Credit Mutuel.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based on the evidence provided, the Complainant’s demonstrated rights in the trademark NBC are well proven.
The first disputed domain name <nbcboston.com> is made up of a simple combination of the Complainant’s trademark and the geographical location of Boston. In the second disputed domain name <nbcdfw.com>, the combination is the Complainant’s trademark and, according to the Complainant, the initials of the geographical location of Dallas- Fort Worth. An Internet search for “dfw” confirms that it is a well known abbreviation for Dallas-Fort Worth. More than 13 million hits (principally related to Dallas-Fort Worth location) occurred when searching for “dfw”.
Since the commencement of the UDRP, many cases have considered the effect of linking a trademark with a geographical name as either a prefix or suffix to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. As expressed in Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171, a geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”.
Consistent with previous decisions, the Panel agrees that the addition of a geographical name or the recognizable initials of a geographical location does not alter the basic meaning of the <nbcboston.com> and <nbcdfw.com> domain names. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the words “nbcboston” and “nbcdfw”. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a response from the respondent as it considers appropriate.
The Complainant has argued that there is no relationship between the Complainant and the Respondent and that the name NBC is so well known and recognised that there can be no legitimate use by the Respondent. Also, had the Respondent, as part if its responsibility in agreeing to accept its domain names registration agreement, investigated whether the domain names may infringe legal rights of others it would have readily revealed the Complainant has rights to the name NBC. According to the Complainant the only reason for registering the domain names is for commercial gain derived from diverting traffic through the domain names in the form of “click through” revenue and “popup” or “popdown” advertising displayed on the websites.
To evidence the commercial nature of the domain names’ websites the Complainant provided screen dumps showing the use of CPX Interactive, an online advertising network company that pays the domain name holder, as “publisher”, revenue for traffic generated.
Accepting that the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark or to apply for a domain name incorporating any such mark, the evidence before the Panel is that the Respondent has used the domain names to derive a commercial benefit.
The Respondent has chosen not to rebut the evidence provided and, consequently, the Panel finds no indication of any situation which would suggest the Respondent has rights or legitimate interests in the domain names. There is no indication that the Respondent had been commonly known by the domain names, had made a legitimate non commercial or fair use of the domain names or had made bona fide preparations to use the disputed domain names in connection with a bona fide offering of goods or services. As there is no evidence provided that refutes the Complainant’s submissions, the Panel finds that the Complainant has proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining whether there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. One circumstance illustrated in part (iv) of that paragraph relevant to this case is whether by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 website or location or of a product or service on the respondent’s website or location.
The Complainant provided compelling evidence that the Respondent deliberately registered and is using the domain names for commercial purposes by diverting web traffic to portals and using sponsored links for profit. Such usage has been found to constitute bad faith in cases such as Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244, Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911 and Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849.
The fact that the websites are primarily related to broadcasting indicates that the Respondent knowingly used the Complainant’s trademark and is further evidence that the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant’s NBC trademark.
Finally, the Complainant provided a list of the numerous domain name dispute cases where the Respondent has been involved in using multiple domain names directed against different complainants. A “pattern of conduct” is clearly evident and again leads to the conclusion that the Respondent is acting in bad faith.
Based on the above, the Panel finds that the disputed domain names were registered and used 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 names <nbcboston.com> and <nbcdfw.com> be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: July 22, 2008