Complainant is NBC Universal, Inc. of New York, United States of America, represented by Kilpatrick Stockton LLP, New York, United States of America.
Respondent is Roger Pelfrey of Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nbcatlanta.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2009. On November 13, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 16, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 18, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 10, 2009.
The Center appointed Paul E. Mason as the sole panelist in this matter on December 11, 2009. 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 Center received and transmitted to the Panel an email communication from Respondent indicating he had received the Complaint but was traveling on family matters. The Panel in its Procedural Order of December 11, 2009 granted an extension to Respondent to reply to the Complaint by December 22, 2009.
On December 22, 2009, the Center forwarded to the Panel the reply by Respondent consisting of a short email explaining his position and a set of attachments of WhoIs Lookups with numerous variants of domain names with the prefix “nbc”.
4. Factual Background
Complainant owns and operates the well-known NBC television network and other entertainment properties under the brand name “NBC (National Broadcasting Company”). It owns numerous related trademark registrations in the United States dating back to 1956 (Complaint, pp. 4 – 5). Complainant also owns and uses a number of related domain names such as <nbc.com> and <nbcuniversal.com>. It also owns domain names consisting of the NBC name/mark and a city suffix to identify local NBC affiliate TV stations in these cities such as <nbchicago.com>, <nbclosangeles.com>, <nbcnewyork.com> and over 25 others.
Respondent submitted evidence in the form of WhoIs Lookups to show that there are also a substantial number of U.S. cities where the domain names containing an “nbc” prefix are owned by individuals or entities other than Complainant.
5. Parties' Contentions
A. Complainant
1. Identical or Confusingly Similar
Complainant cites the longstanding notoriety of the NBC mark which is so well-known in the United States (some 99% of all U.S. households have tuned into NBC according to Paragraph 12 of the Complaint). Therefore the “nbc” prefix to the domain name at issue creates confusing similarity between Complainant's mark and the domain name. Complainant cites several WIPO UDRP cases for the argument that adding a geographical suffix – identifier does not materially alter this fact of confusing similarity.
2. Rights or Legitimate Interests
Complainant declares it has given no grant or license to Respondent to use its mark. It also asserts that since the NBC mark is so well-known and widespread, it is impossible for anyone else using these letters in a domain name to have any legitimate interest at all.
3. Registration and Use in Bad Faith
Regarding bad faith registration, Complainant asserts that when acquiring the domain name Respondent must have known about the ubiquitous NBC mark.
For bad faith use, Complainant cites advertisements by Sedo.com (a business partner of the Registrar) to sell the disputed domain name as evidence of bad faith. It also contends that Respondent passively held the domain name and did not actively use it for a website for over a year, triggering an independent finding of bad faith under well-settled WIPO UDRP case decisions.
B. Respondent
1. Identical or Confusingly Similar
As noted above, Respondent argues that since Complainant does not own all the domain names with “nbc” prefixes and major U.S. city suffix – identifiers, there is room for interpretation here.
2. Rights or Legitimate Interests
Respondent submitted evidence indicating that its registration of the domain name at issue here, <nbcatlanta.com> was related to its trash dumpster business National Bins and Containers of Atlanta.
3. Registration and Use in Bad Faith
Respondent submitted evidence in the form of correspondence with Sedo.com indicating that he as owner of the domain name, did not offer it for sale on Sedo.com and that Sedo.com made a mistake leaving a prior offer for sale posted by a previous owner of the domain name. This is something which Sedo.com's Customer Service Department acknowledged in its response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates Complainant's NBC trademark (as the principal element) in combination with the geographical descriptor “atlanta”. The Panel finds that the domain name is confusingly similar to Complainant's mark. The geographical identifier – suffix in the domain name (“atlanta”) is not sufficient to make a meaningful distinction between the two, as indicated by the long line of UDRP cases cited in paragraph 22 of the Complaint.
B. Rights or Legitimate Interests
The Panel finds that Complainant did not grant any permission or license to Respondent to use its mark in the domain name. While Respondent has alleged rights connected with his different and non-competing business (National Bins and Containers of America), he has submitted absolutely no evidence showing any activity whatsoever by this business.
Therefore the Panel finds Respondent has no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant alleges bad faith registration by the fact that Respondent acquired the domain name with full knowledge of the NBC mark. As Respondent resides in the United States, it would be difficult to believe he did not know the NBC name when acquiring the domain name. The Panel does find bad faith registration by acquisition here.
In the United States at least, the name and mark NBC are so well-known that it is inconceivable that Respondent did not know of it when acquiring the domain name at issue. In any event, even if Respondent did not know of this well-known registered trademark, it should have known. It is the responsibility of the acquirer of a domain name to do a name search.
Complainant alleges bad faith use of the domain name by attempted sale of the domain name.
Respondent has successfully rebutted this latter allegation with its showing of error by Sedo.com in continuing to list the domain name for sale, even after Respondent acquired it as the new owner in June 2008.
However, Respondent has failed to show any active use of the domain name for a website to promote his dumpster business. Instead, the domain name appears to have been passively “parked” with the Registrar for a substantial time. A visit to “www.nbcatlanta.com” by the Panel on December 22, 2009 yielded the following message from the Registrar on this web page:
“THIS DOMAIN NAME HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS”.
The rest of the web page promotes registration and related services by the Registrar. There is no information on Respondent's dumpster or other business on the page.
It is settled through a solid line of UDRP cases dating back to 2000, that mere passive holding of a domain name without anything more is a strong indication of bad faith use of the domain name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and a myriad of other WIPO UDRP cases relying thereon.
Therefore the Panel finds bad faith use of the domain name by Respondent's passive holding for a substantial period of time.
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 name <nbcatlanta.com> be transferred to Complainant.
Paul E. Mason Sole Panelist
Dated: December 22, 2009
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