Cox Holdings Inc. v. Frank Milan Case No. D2008-0427
1. The Parties
The Complainant is Cox Holdings Inc., Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States of America.
The Respondent is Frank Milan, Macon, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2008. On March 20, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 20, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2008.
The Center appointed R. Eric Gaum as the sole panelist in this matter on May 13, 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.
On May 27, 2008, the Panel requested an extension pursuant to paragraphs 10(c), and 15(b) of the Rules until May 30, 2008 to file its draft Decision with the Center. On the same day, the Center reported the extension to the parties.
4. Factual Background
Since at least as early as August 13, 1974, through Complainant’s subsidiary, Cox Broadcasting Inc., Cox television stations have used the service mark ACTION NEWSto brand television news broadcasts in various markets across the United States, including Charlotte, North Carolina, Atlanta, Georgia and Reno, Nevada.
In addition, Complainant has licensed the mark for use by a number of other television stations in their geographic markets, including Cleveland, Ohio, Lexington, Kentucky, Las Vegas, Nevada, Memphis, Tennessee and Omaha, Nebraska.
Complainant currently owns a United States federal service mark registration for the mark in connection with providing radio and television broadcasting services. U.S. Reg. No. 1,048,292. The ACTION NEWS mark was originally registered in 1976 in the name of Cox Broadcasting Corporation. Subsequently, after a series of assignments, the registration and associated goodwill were assigned to Complainant Cox Holdings, Inc.
The mark has been in use continuously since August 1974 and the registration for the mark is now incontestable within the meaning of the Lanham Act.
The disputed domain name was first created on December 2, 2007.
Complainant has developed extremely valuable goodwill and an outstanding reputation in this mark through extensive use and promotion and the viewing public has come to associate the ACTION NEWSmark exclusively with Cox and its licensees in their respective markets nationally. The ACTION NEWSmark is famous and is an indication of high quality and of origin exclusively with Complainant and its licensees.
According to the WHOIS database, Respondent registered the Domain Name on December 2, 2007. Respondent registered the Domain Name without the authorization, knowledge or consent of Complainant. Respondent is not a licensee of Complainant, nor is it authorized to use Complainant’s ACTION NEWSmark.
The Domain Name was used by Respondent to direct visitors to a website that purported to be for a television station “Action 25 News – WACT.” In reality, there is no such television station. Until recently, the website was substantially similar in look and feel to the website for Complainant’s ACTION NEWS television station in Charlotte — Cox television station WAXN64, available at “www.wsoctv.com/waxntv”. Notably, the “www.action25news.com” site used a logo identical to Complainant’s “Action News at 10pm” logo, and very similar color schemes, layouts and formatting.
In particular, the “www.action25news.com” site mimicked both the look and content of the WAXN64site. Both sites featured a solid blue banner at the top of the page, with very similar red and white station logos in the upper-left corner. The navigation bars for the sites appeared in the same typeface on a thin orange banner and read essentially the same. In addition, the main frame beneath the navigation bar on each site was essentially the same in content and appearance. Both websites contained promotions for the “CSI: Miami,” “The Andy Griffith Show,” “Temptation,” “Court Action,” “Friends,” “Dr. Phil & Oprah in Primetime” and “The Morning Show with Mike and Juliet” television programs.
The foregoing similarities manifestly were intended to confuse consumers into believing that the “Action 25 News – WACT” website was the website for a genuine television station and further that this supposed television station was affiliated with or sponsored by Complainant’s WAXN 64 television station and website. Moreover, such confusion was exacerbated by the fact that the domain name consists of Complainant’s mark ACTION NEWSwith the mere addition of the number “25,” which allegedly represented the channel number for the fake television station.
On February 25, 2008, NBC Augusta.com published an article entitled “Fake Macon TV Station Runs a Scam, Promising a Quick Buck.” The article outlines how the operator of the “www.action25news.com” website swindled visitors to the page of fictional cable television station “WACT25” (the content of which was taken almost entirely from WAXN64’s actual station website). The “www.action25news.com” website carried a story from an alleged “consumer reporter” that persuaded visitors to purchase job training DVDs, which allegedly would enable people to earn $84,000 a year.
At some time after February 27, 2008, Respondent replaced the content hosted at “www.action25news.com” with a “Coming Soon! This site is under construction” page with links to other websites on it, provided by the registrar, Network Solutions.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 The Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution 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 assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). 6.3 The Center forwarded notification of the Complaint to Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to Respondent via email.
6.4 Based on the methods employed to provide Respondent with notice of the Complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the reasonable allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
A. Identical or Confusingly Similar
6.7 Based upon the registered trademark for ACTION NEWS and the continuous use of the ACTION 25 NEWS and other related marks, Complainant clearly has rights in the mark.
6.8 Complainant asserts that the domain name is virtually identical to the trademark ACTION NEWS.
6.9 The Panel agrees with Complainant that the only actual differences between the domain name and the trademark are the addition of the generic TLD “.com” and the numeral “25”. Respondent’s domain name merely adds the two digit numeral “25”, presumably indicating a channel number, to Complainant’s ACTION NEWSmark. The addition of the generic number 25, representing a television station channel or frequency, does not avoid the conclusion that the domain name is confusingly similar to Complainant’s ACTION NEWS mark.
6.10 The Panel finds the domain name is identical to the registered trademark ACTION NEWS, and that Complainant has established it has rights in the mark ACTION NEWS, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] 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 fideoffering 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.
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name .
6.13 The Panel finds, also taking into consideration the use of the disputed domain name as detailed below under “Bad Faith”, that the Respondent has no rights or legitimate interests in respect of the domain name , pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.14 Under paragraph 4(b) of the Policy, the following shall be evidence of the use and registration of a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 its website or location or of a product or service on its website or location.
Respondent’s conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy because Respondent used the domain name to intentionally attempt to attract, for commercial gain, Internet users to the “www.action25news.com” website by creating a likelihood of confusion with Complainant’s ACTION NEWSmark as to the source, sponsorship, affiliation, or endorsement of its website in contravention of paragraph 4(b)(iv) of the Policy.
Respondent’s copying of Complainant’s logo, the look and feel of Complainant’s website, as well as substantial portions of the text of Complainant’s website, is indicative of bad faith.
Respondent has no legitimate business connection with the domain name; the only evident reason that Respondent uses the domain name is to increase traffic to and establish confidence in Respondent’s website by creating confusion with Complainant’s ACTION NEWSmark and its associated goodwill.
The replacement of Complainant’s stolen content further demonstrates Respondent’s bad faith registration and use of the domain name. The publication of articles exposing Respondent’s alleged scam put Respondent on notice of potential legal claims. The exposure was akin to the receipt of a demand letter, which caused Respondent to cease its activities.
Respondent’s actions both prior to and after the exposure of its alleged scam demonstrate that Respondent registered and used the domain name in bad faith.
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 name, be transferred to the Complainant.