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DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc. [2005] GENDND 323 (13 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CBS Broadcasting Inc., f/k/a CBS Inc. v. Naivi Rodriguez a/k/a Naivi R

Case No. D2005-0005

1. The Parties

The Complainant is CBS Broadcasting Inc., f/k/a CBS Inc., New York, New York of United States of America, represented by Naomi B. Waltman, United States of America.

The Respondent is Naivi Rodriguez a/k/a Naivi R, Ixtapa, Guerrero of Mexico.

2. The Domain Name and Registrar

The disputed domain name <cbs-cares.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2005. On January 5, 2005, the Center transmitted a request by e-mail to eNom for registrar verification in connection with the domain name at issue. On January 5, 2005, eNom transmitted its verification response by e-mail to the Center, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 January 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2005.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 10, 2005. 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 February 11, 2005, the Complainant sent a decision to the Center and the Respondent, issued on February 10, 2005 by the Center, involving the domain name <cbscares.com> which is similar to the disputed domain name in the case at hand (CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988). Given the fact that this decision is publicly displayed on the Center’s website, the Panel decided to accept this last communication.

4. Factual Background

The Complainant is one of the leading broadcasting companies in the United States, using “CBS” for many years, in connection with its broadcasting services, as well as the marketing, sale and promotion of a wide variety of merchandise such as caps, t-shirts, etc.

The Complainant registered the CBS mark with the US Patent and Trademark Office in the 1960s:

- US Registration No. 852,481 for radio and television broadcasting services in class 38, dated July 9, 1968, and renewed on July 9, 1988;

- US Registration No. 777,570 for television broadcasting services in class 104, dated September 22, 1964, and renewed on September 22, 1984.

Over the years, the Complainant has built up a valuable reputation under the CBS mark, which has become a world famous mark.

The Complainant also operates the websites “www.cbs.com” and “www.cbsnews.com”.

At the end of the year 2000, the Complainant started to use “CBS CARES” in connection with a series of public service announcements broadcast on the CBS Television Network and designed to promote public awareness of, and provide potentially life-saving information, concerning important societal issues, including HIV/AIDS, cancer prevention, child abduction, etc.

The Complainant has applied for federal registration for the mark CBS CARES with the US Patent and Trademark Office for use in promoting public awareness of issues involving families, men, women, children, etc, as mentioned above (Trademark Application Serial No. 7470886), and for use on t-shirts (Trademark Application Serial No. 78470862). Both applications are currently pending.

The Panel noted in the WIPO Case No. D2004-0988 sent by the Complainant that both applications were made by the Complainant on August 20, 2004.

According to the WHOIS information sent by eNom on January 5, 2005, the Respondent registered the disputed domain name <cbs-cares.com> on November 26, 2004.

The Panel notes that the registration dates of all of the above-referenced registrations and applications for registration predate the date of registration of the disputed domain name by the Respondent.

On December 14, 2004, the Complainant’s Counsel sent a letter to the Respondent, informing the Respondent of the Complainant’s rights on the CBS mark and the CBS Cares mark and consequently, requesting the transfer of the disputed domain name.

The Respondent did not respond to this letter, nor did he transfer the disputed domain name.

5. Parties’ Contentions

A. The Complainant

The Complainant claims that the disputed domain name is identical to the Complainant’s CBS CARES mark, stressing the fact that the addition of the extension “.com” is not a distinguishing difference, and is confusingly similar to the Complainant’s longstanding and world famous CBS mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name due to the following reasons:

- the Respondent is not a licensee of the Complainant, nor has the Complainant granted any permission or consent to the Respondent to use the CBS and the CBS Cares marks or any domain name incorporating those marks;

- the Respondent is not commonly known by the name CBS, cbscares or cbs-cares.com, there is nothing in the WHOIS contact information for the Respondent implying that it is “commonly known by the disputed domain name”;

- the Respondent has not evidenced any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the sole reference to the domain name on the web page accessed by the disputed domain name (which basically consists in a sera engine portal), is in fact the heading at the top of the web page.

Finally, the Complainant asserts that the disputed domain name was registered and is used by the Respondent in bad faith. According to the Complainant, given the fame and world renown of the CBS and the CBS CARES marks, the Respondent clearly knew or should have known of the Complainant’s registration and use of those marks prior to registering the disputed domain name. The Complainant also alleges that, through its registration and use of the disputed domain name, the Respondent has prevented the Complainant from using the <cbs-cares.com> domain name in connection with its services, particularly, in providing critical and potentially life-saving information to its viewers in connection with its CBS Cares public service campaign. Thus, the Complainant maintains that the Respondent’s actions were undertaken in bad faith, primarily for the purpose of disrupting the Complainant’s business in its on-line ventures, to prevent the Complainant from making use of its own marks and in an unlawful attempt to mislead internet users as to the “source, sponsorship, affiliation, or endorsement” of the Respondent’s website, by means of initial interest confusion. The Complainant contends that this conclusion of bad faith registration and use is supported by the fact that no plausible explanation exists as to why the Respondent selected the CBS and the CBS Cares marks as part of its domain name other than to trade on the goodwill of the marks, and that the Respondent clearly ignored the Complainant’s request to transfer the disputed domain name.

In view of the foregoing, the Complainant seeks the transfer of the domain name
<cbs-cares.com> to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:

A. Identical or Confusingly Similar

With regard to the CBS mark, the Complainant has proven that it owns the trademark CBS.

This trademark is included in the disputed domain name <cbs-cares.com>. The fact that the word ““cares”” is added to the Complainant’s trademark does not eliminate the similarity between the Complainant’s trademark and the disputed domain name, and consequently, the risk of confusion in any ordinary consumer’s mind, particularly since the Complainant uses “CBS Cares” in connection with its public service announcements, as already held by the Panel in CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul (WIPO Case No. D2004-0988, February 10, 2005).

With regard to the CBS CARES mark, the Panel notes that the registration applications for this mark, that were made before the registration by the Respondent of the disputed domain name, are still pending in the US Patent and Trademark Office. Nonetheless, as recognized in many WIPO decisions, the term “trademark or service mark” as used in Paragraph 4(a)(i) of the Policy encompasses both registered marks and common law trademarks. Evidence produced by the Complainant demonstrates a continuous use of the service mark “CBS CARES” since the end of the year 2000, in connection with a series of public service announcements broadcast on the CBS Television Network.

Therefore, the Panel agrees with the Panel’s finding in CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul (WIPO Case No. D2004-0988, February 10, 2005), that the Complainant has established common law rights in “CBS CARES”, and that these rights existed in any case, long before the registration by the Respondent of the disputed domain name.

The Panel notes that the CBS CARES mark is entirely integrated in the disputed domain name.

Consequently, the Panel finds that the disputed domain name <cbs-care.com> is confusingly similar to the CBS mark of the Complainant, and is identical to the CBS CARES mark of the Complainant. Accordingly, the action brought by the Complainant meets the requirement of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant must demonstrate that the Respondent has no rights to, or legitimate interests in the domain name.

The Complainant indicates that it has not licensed or otherwise consented to the Respondent’s use of the Complainant’s marks in connection with the disputed domain name.

The Panel also notes that the website “www.cbs-cares.com” basically consists of a search engine portal redirecting to third parties’ websites through hypertext links, and that the sole reference to the name “CBS Cares” is a heading at the top of the web page, enabling the Panel to conclude, in the absence of any evidence to the contrary from the Respondent, that there is no bona fide offering of goods and services in relation to this domain name. Furthermore, given the use made by the Respondent of the disputed domain name, there is little doubt that the Respondent has never been commonly known in the normal course of business by the trademark, service mark or domain name CBS and/or CBS Cares. Finally, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, and in particular, that the Respondent is not attempting to misleadingly divert and benefit from the world famous renown of the Complainant’s marks.

In any case, the Respondent did not submit any Response and evidence proving its rights or legitimate interests in the disputed domain name, whereas it had been given the opportunity to do so pursuant to Paragraph 4(c) of the Policy.

Therefore, the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

The Complainant is a well-known broadcasting company in the United States and is known worldwide.

Therefore, with regard to the registration of the disputed domain name, the Panel agrees with the Complainant’s assertion that, given the fame and world renown of the CBS and the CBS CARES marks, the Respondent clearly knew or should have known of the Complainant’s registration and use of those marks prior to registering the disputed domain name. Thus, and in the absence of evidence to the contrary from the Respondent, the Panel finds that the Respondent registered the disputed domain name in bad faith.

With regard to the use of the disputed domain name, the Complainant does not prove that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademarks or service marks from reflecting the mark in a corresponding domain name.

However, since the Respondent knew or should have known of the Complainant’s registration of the CBS and CBS CARES marks, and has in any case been informed in a letter dated December 14, 2004 of the existence of the Complainant’s rights on the CBS and the CBS Cares marks, the Panel cannot conceive of any plausible actual use of the disputed domain name that would be legitimate. As stated in Laurel Pub Co. Limited v Peter Robertson/Turfdata (WIPO Case No. DTV2004-0007, August 26, 2004), “The fact that the Respondent has chosen a domain name reflecting the Complainant’s trademark suggests that the Respondent intended to disrupt the business of the Complainant and to divert traffic intended for the Complainant’s site to his own. Members of the public looking for the Complainant’s site searching for [the disputed domain name] may arrive at the Respondent’s site instead by mistake.”

Finally, the Respondent did not submit any Response or evidence proving that it used the disputed domain name in good faith, whereas it had been given the opportunity to do so.

Therefore, the Panel finds that the domain name <cbs-cares.com> was registered and is used by the Respondent in bad faith and considers the requirements of Paragraph 4(a)(iii) of the Policy to be fulfilled.

7. Decision

For all the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cbs-cares.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist

Date: February 24, 2005