The Complainant is Gray Television Group, Inc. of Atlanta, Georgia, United States of America ("United States"), represented by Fenno Law Firm, LLC, United States.
The Respondent is Radio plus, spol.s r.o. of Prague, Czech Republic.
The disputed domain name <wdbj.com> (the "Disputed Domain Name") is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 28, 2016, 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.1 The Center sent an email communication to the Complainant on July 28, 2016 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 1, 2016.
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 August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. On August 22, 2016, the Respondent requested the extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the Response due date was extended until August 26, 2016. The Response was filed with the Center on August 26, 2016.
The Center appointed John Swinson as the sole panelist in this matter on August 31, 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.
The Complainant is Gray Television Group, Inc., a company incorporated in the United States. The Complainant is the owner of numerous television stations in the United States, including WDBJ in Roanoke, Virginia.
The Complainant owns United States Patent and Trademark Office ("USPTO") Trade Mark Registration No. 4777079 for the word mark WDBJ7 (registered on July 21, 2015, first used in commerce on May 1969).
The Respondent is Radio plus, spol.s r.o. of the Czech Republic and is in the business of electronic trade. It also purchases and registers domain names.
The Disputed Domain Name was registered on July 11, 1996. At the time of the Complaint, the most recent update to the registration was on December 1, 2015.
At the time of filing the Complaint, the website at the Disputed Domain Name redirected users to a website displaying an error code and a pop-up which directed users to call a number for assistance and warned of suspicious activity. The website at the Disputed Domain Name now appears to be inactive.
The Complainant's contentions are as follows.
The Complainant is the owner of numerous television stations in the United States, including WDBJ in Roanoke, Virginia, which it purchased from WDBJ Television Inc. in 2015. WDBJ is the call sign for this station, which broadcasts on Channel 7.
The Complainant's predecessor began using the trade marks WDBJ and WDBJ7 in relation to television services at least as early as May 1969. It registered the domain name <wdbj7.com> on July 11, 1996 and began operating a website at that domain name shortly thereafter.
The Complainant owns the registered WDBJ7 trade mark set out at Section 4 above. The Complainant is also the owner of common law trade mark rights in WDBJ in relation to television and similar services, through its predecessor's use dating from at least 1969.
The Disputed Domain Name incorporates the Complainant's common law trade mark WDBJ in its entirety and differs from the Complainant's registered trade mark WDBJ7 only by the deletion of the number "7".
The Complainant has been informed of actual confusion experienced by consumers when attempting to access the Complainant's website.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The Respondent is not operating a legitimate website under the Disputed Domain Name. Users are redirected to another site with an error code and a pop-up which directs the user to call a number for assistance and warns of suspicious activity. The Complainant submits that this amounts to "phishing".
- There is no evidence of the Respondent using, or making preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Respondent has not been commonly known by the Disputed Domain Name.
- The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant and its predecessor had been using the WDBJ and WDBJ7 trade marks for 26 years prior to the Respondent's registration of the Disputed Domain Name.
The Respondent has not operated a legitimate website at the Disputed Domain Name and used a privacy service for concealment purposes.
The Respondent has attempted to attract users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant's registered and common law trade marks. Bad faith is further evidenced by the phishing and malicious activities being undertaken by the Respondent.
The Respondent's contentions are as follows.
The Disputed Domain Name was registered in 1996. The Complainant's trade mark was registered in 2015. The Complainant's trade mark is confusingly similar to the Disputed Domain Name and not the other way around.
The Respondent's company was created in 1991. It is in the business of electronic trade. It also purchases and registers "generic" domain names. Four letter domain names that do not contain vowels are "inherently valuable", particularly in the Chinese market. The Disputed Domain Name has a high value because of the "BJ" at the end, as "BJ" is used to refer to Beijing.
The Disputed Domain Name was not registered with the Complainant in mind. It was registered because it is a four letter domain name. The Complainant has never contacted the Respondent in relation to the alleged "phishing". If these allegations are true, it was caused by the advertiser buying traffic from a zero-click advertising platform. Instead of writing to the Respondent, so it could take down a "rogue" advertiser, the Complainant is using the UDRP process to get the Disputed Domain Name for free.
The Respondent had never heard of the Complainant prior to the Complaint. The Complainant is unknown outside its local market.
The Disputed Domain Name has "intrinsic value" as a four letter domain name. If the Complainant did not exist, the Disputed Domain Name would still have the same value.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements is on the Complainant.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant has rights in the registered trade mark WDBJ7. The Panel is also satisfied that the Complainant (including through its predecessor) has longstanding common law rights in the WDBJ trade mark. In this case, the generic Top-Level Domain ("gTLD") ".com" is irrelevant in assessing confusing similarity under the Policy and may be ignored.
The Disputed Domain Name is identical to the Complainant's common law trade mark WDBJ and confusingly similar to the Complainant's registered trade mark WDBJ7 (differing only in the deletion of the "7").
In light of the above, the Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- There is no evidence that the Respondent is commonly known by the Disputed Domain Name.
- There is no evidence that the Respondent has any connection with the WDBJ7 registered mark or the WDBJ unregistered mark and the Complainant has not given the Respondent any permission to use either trade mark.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant submits that the Respondent has been using the Disputed Domain Name as part of a phishing scheme (the Complainant attached a screenshot evidencing this use). The Respondent submits that any phishing scheme originated from a third party advertiser. The Panel notes that a domain name registrant will normally be deemed responsible for the content appearing on the website at its domain name, even if such registrant is not exercising direct control over such content (see paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
The Respondent has not provided sufficient evidence to rebut the Complainant's prima facie case. It states that it is in the business of registering and buying domains and that it has received offers in relation to the Disputed Domain Name, but provides no further explanation regarding its business or the alleged offers.
In light of the above, the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Noting the preceding section, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith. To elaborate further, the website at the Disputed Domain Name appears to have been used for a common phishing scheme known as the "tech support scam pop-up". This is scheme is described in Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488 as follows:
"…such tech support scam presents itself to the user while browsing the web in the form of a pop-up message saying that a virus or other suspicious activity has been detected, often providing a phone number which the user can call to get support for the problem."
In addition to bad faith use, the Complainant must separately prove that the Disputed Domain Name was registered in bad faith.
Publically available records indicate that the registrant of the Disputed Domain Name may have changed a number of times since the Disputed Domain Name was first registered in 1996. However, the Complainant did not provide any detailed information in relation to the registration history of the Disputed Domain Name may have supported the Complainant's claim of bad faith registration (see e.g., A'Gaci, L.L.C. v. Radio plus, spol. s r.o., WIPO Case No. D2014-2101).
In the absence of such further evidence, the Panel is unable to find bad faith registration for the following reasons:
- There is no evidence of showing that the Respondent was, or should have been, aware of the Complainant or its registered and unregistered trade marks. There is no evidence that the trade mark is famous. The Disputed Domain Name and the Complainant's registered trade mark are not identical. Nothing on the record suggests that the Respondent should have had knowledge of the Complainant when it registered the Disputed Domain Name (see e.g., Boehringer Ingelheim International GmbH v. Sushanying, WIPO Case No. D2016-0835).
- Previous Panels have found that short domain names are valuable property (see SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566). It is conceivable that the Respondent registered the Disputed Domain Name for this reason and not because of any value it may have as a trade mark.
In light of the above, the Panel finds that the Complainant has not made out the third element of the Policy. There is insufficient evidence to find registration in bad faith.
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: September 12, 2016
1 The original Complaint was filed against a privacy shield.