DECISION

Television Food Network, G.P. v. CostNet a/k/a Domain Manager

Claim Number:  FA0308000190611

PARTIES

Complainant is Television Food Network, G.P., New York, NY (“Complainant”) represented by Jessica R. Richman, of Baker & Hostetler LLP.  Respondent is CostNet a/k/a Domain Manager, San Jose, Costa Rica (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <foodtelevision.com>, registered with Register.Com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 26, 2003; the Forum received a hard copy of the Complaint on August 28, 2003.

On August 26, 2003, Register.Com, Inc. confirmed by e-mail to the Forum that the domain name <foodtelevision.com> is registered with Register.Com, Inc. and that Respondent is the current registrant of the name. Register.Com, Inc. has verified that Respondent is bound by the Register.Com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@foodtelevision.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 3, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <foodtelevision.com> domain name is confusingly similar to Complainant’s FOODTV.COM mark.

2. Respondent does not have any rights or legitimate interests in the <foodtelevision.com> domain name.

3. Respondent registered and used the <foodtelevision.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns and operates the cable television channel Food Network, which has been broadcasting since November 1993.  The Food Network is available to over 79 million subscriber households and is available to the Costa Rican population, and has been since at least November 1999.  Complainant filed an application for the registration of the FOODTV.COM mark with the U.S. Patent and Trademark Office (“USPTO”) on January 5, 2000 (Reg. No 2,473,110 – registered July 31, 2001).  Complainant has used the FOODTV.COM mark in commerce since August 19, 1995.  Complainant uses the FOODTV.COM mark in conjunction with its television network and its <foodtv.com> website.  Complainant’s <foodtv.com> website received 13 million page views per month for the third quarter of 1998 and received over 4.3 million unique users in July 2003. 

Respondent registered the disputed domain name on September 7, 1998.  The disputed domain name links to adult-oriented websites.  One of the websites that the domain name links to is the <setraffic.com> website, which claims to have “the most hardcore and content rich sites on the net” and features adult-oriented material.  Respondent has a history of engaging in cybersquatting.  See H-D Michigan, Inc. v. CostNet a/k/a Domain Manager, FA 128681 (Nat. Arb. Forum Dec. 16, 2002) (Panel ordered Respondent to transfer the <4-harley-babes.com> domain name to Complainant); see also Cartoon Network LP, LLLP v. CostNet aka Domain Manager, FA 141820 (Nat. Arb. Forum Feb. 13, 2003) (Panel ordered Respondent to transfer the <cartonnetwork.com> domain name to Complainant).

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the FOODTV.COM mark through registration with the USPTO and through the mark’s use in commerce since 1995.  Complainant’s use of the mark in commerce dates back to 1995; therefore, the fact that Respondent’s domain name was registered prior to Complainant’s USPTO registration is irrelevant.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Fishtech Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH, which it has used since 1982); see also Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that Complainant has rights in the mark because of Complainant’s first use of the mark where Respondent filed for a trademark registration of the same mark but under a different class).

Respondent’s <foodtelevision.com> domain name is confusingly similar to Complainant’s FOODTV.COM mark because the domain name includes the word “food” and merely extends the abbreviation “tv” to its full spelling: television.  In past decisions it has been held that abbreviations of a mark are insufficient to distinguish a domain name from another’s mark.  This Panel sees no reason why this same principle should not be applied in the reverse.  Therefore, the Panel concludes that Respondent’s use of the word “television” instead of the abbreviation “tv” is insufficient to distinguish the domain name from the FOODTV.COM mark and hence the domain name is confusingly similar to Complainant’s mark.  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for “Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations in the Complaint, the Panel may presume that Respondent lacks rights or legitimate interests in the <foodtelevision.com> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, the record fails to establish that Respondent was licensed or authorized to register or use domain names that incorporate Complainant’s mark.  The WHOIS information fails to establish that Respondent is one commonly known by the <foodtelevision.com> domain name or the FOODTELEVISION.COM mark.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

In addition, Respondent has used the misleading domain name to direct Internet users to adult-oriented websites.  Due to Respondent’s past engagement in cybersquatting activity, the Panel presumes that Respondent receives “click-through-fees” from vendors whose adult-oriented websites are visited by Interenet users who are redirected via Respondent’s domain name.  Use of a domain name that is confusingly similar to another’s mark to link to adult-oriented websites is evidence that the domain name is not being used to make a bona fide offering of goods or services pusuant to Policy ¶ 4(c)(i) nor for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also McClatchy Mgmt. Servs., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Panel infers that Respondent had actual or constructive knowledge of the FOODTV.COM mark because of the wide promotion of the mark on television, the mark’s use in commerce since 1995 and because the mark has been registered with the USPTO.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

Furthermore, Respondent has linked the <foodtelevision.com> domain name to adult-oriented websites, which is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <foodtelevision.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 13, 2003

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