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NATIONAL ARBITRATION FORUM

DECISION

American Broadcasting Companies, Inc. v. Rosa Edwards


Claim Number: FA0501000399593

PARTIES
Complainant is American Broadcasting Companies, Inc.
(“Complainant”), represented by J. Andrew Coombs, 450 North Brand
Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Rosa
Edwards (“Respondent”), represented by Preston J. Edwards, Sr.,
7231 Arbor Drive, New Orleans, LA 70126.

REGISTRAR AND DISPUTED DOMAIN NAME


The domain name at issue is <goodmorningamerica.com>,
registered with Enom, Inc.

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

David S. Safran as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 11, 2005; the National Arbitration Forum
received a hard copy of the Complaint on January 11, 2005.

On January 11, 2005, Enom, Inc. confirmed by e-mail to the National


Arbitration Forum that the domain name
<goodmorningamerica.com> is registered with Enom, Inc. and that
the Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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 January 14, 2005, a Notification of Complaint and Commencement


of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of February 3, 2005 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@goodmorningamerica.com by e-mail.

A belated Response was received and determined to be complete on


February 10, 2005. However, in view of the fact that the brief delay in
filing of the Response was not prejudicial to Complainant and
Complainant has not objected to the belated filing nor has Complainant
moved to have the Response stricken, the Response has been
considered in formulating of this decision. See Gaiam, Inc. v. Nielsen,
FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having
claims decided on the merits and not by default and because
Complainant has not been prejudiced in the presentation of its case by
the late submission, Respondent’s opposition documents are accepted
as timely.”).

On February 17, 2005, pursuant to Complainant’s request to have the


dispute decided by a single-member Panel, the National Arbitration
Forum appointed David S. Safran as Panelist.

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant owns U.S. Trademark Registration No. 1,172,617 for the


mark GOOD MORNING AMERICA and contends that Respondent’s
domain <goodmorningamerica.com> is confusingly similar to its
registered trademark due to incorporation of the registered trademark
in its entirety without modification. Furthermore, Complainant
contends that Respondent could obtain no legitimate interest in the
domain <goodmorningamerica.com> since Respondent did not
obtain permission or a license from Complainant to use its registered
trademark, and because the domain was being used by Respondent in
direct competition with Complainant so as to divert persons to its
competitors, having only been converted to a parking site with
unrelated links after receiving a cease and desist notice from
Complainant. Furthermore, Complainant asserts that the domain was
registered with knowledge of Complainant’s mark, both due to the
widespread use of Complainant’s trademark and as evidenced by the
reference to Complainant’s Good Morning America television show on
its website.

B. Respondent

Respondent contends that Complainant’s registration of the mark,


GOOD MORNING AMERICA, for a television news and entertainment
program does not give it exclusive rights to all uses of words “good
morning America,” which are also a greeting, and that Respondent’s
use of these words in a domain name neither infringe Complainant’s
rights nor is likely to result in confusion. In this regard, Respondent
notes that the mark is not used as a trademark or source indicator,
Complainant having acknowledged that “Respondent does not use the
trademark to identify itself on its website or for any other legitimate
purpose.” Additionally, Respondent contends that Complainant
abandoned the right to use its trademark as a domain name by failing
to take action or raise any objection to Respondent’s use of
<goodmorningamerica.com> for eight years.

FINDINGS
The panel finds that Respondent had knowledge of Complainant’s
famous trademark at the time that Respondent registered the domain
<goodmorningamerica.com>, and that this domain is substantially
identical to Complainant’s trademark, differing only by the addition of
the “.com” TLD and the absence of spaces between the words. The
Panel also finds that Respondent could reasonable have expected that
members of the public looking for information about Complainant’s
television show would use the URL www.goodmorningamerica.com
expecting to find information about Complainant’s television show on a
website having that URL, and that, until receiving a cease and desist
notice from the Complainant, the domain was being used by
Respondent in direct competition with Complainant by referring visitors
to competing websites, and afterwards to unrelated websites. Still
further, the Panel finds that Respondent is neither commonly known by
the <goodmorningamerica.com> domain name nor is authorized to
register domain names that feature Complainant’s GOOD MORNING
AMERICA trademark. Additionally, the Panel finds no evidence that
Respondent relied upon the delay by Complainant in instituting these
proceedings, nor does the Panel find any evidence that the delay has
resulted in any detriment to Respondent.

DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (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.”

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

(1) (1) the domain name registered by the Respondent is identical or


confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) (2) the Respondent has no rights or legitimate interests in respect
of the domain name; and
(3) (3) the domain name has been registered and is being used in bad
faith.

Identical and/or Confusingly Similar

Complainant asserts that it has established rights in the GOOD


MORNING AMERICA mark through registration with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,172,617 issued
Oct. 6, 1981) as well as through continuous use of the mark in
commerce since 1975. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have
held that registration of a mark is prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of refuting this assumption);
see also 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.”).

Complainant argues that Respondent’s


<goodmorningamerica.com> domain name is identical to
Complainant’s GOOD MORNING AMERICA mark. The Panel finds that
the addition of the generic top-level domain “.com” and the omission
of the spaces between the terms in Complainant’s mark are not
enough to distinguish Respondent’s domain name from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See Kioti Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level
domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has
been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE,
“as spaces are impermissible in domain names and a generic top-level
domain such as ‘.com’ or ‘.net’ is required in domain names”).

Rights or Legitimate Interests

Complainant asserts that Respondent initially used the


<goodmorningamerica.com> domain name, which is identical to
Complainant’s GOOD MORNING AMERICA mark, to operate a website
that featured links to competing television programs. The Panel finds
that such use is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Winmark
Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that Respondent had no rights or legitimate interests in a
domain name that used Complainant’s mark to redirect Internet users
to a competitor’s website); see also N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to
Respondent’s competing website through the use of Complainant’s
mark).

Complainant further asserts that after receiving a demand letter from


Complainant, Respondent modified its website so that it currently
features links to various unrelated commercial websites. The Panel
finds that such use is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June
12, 2003) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to Complainant’s mark,
websites where Respondent presumably receives a referral fee for
each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding
that Respondent’s diversionary use of Complainant’s mark to attract
Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the
disputed domain names).
Moreover, Complainant contends that nothing in the record indicates
that Respondent is either commonly known by the
<goodmorningamerica.com> domain name or is authorized to
register domain names that feature Complainant’s GOOD MORNING
AMERICA mark. Thus, the Panel concludes that Respondent lacks
rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)
(finding that without demonstrable evidence to support the notion that
a respondent is commonly known by a domain name, the notion must
be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark
and never applied for a license or permission from Complainant to use
the trademarked name).

Registration and Use in Bad Faith

Complainant argues that Respondent initially used the


<goodmorningamerica.com> domain name, which is identical to
Complainant’s GOOD MORNING AMERICA mark, to operate a website
featuring links to competing television programs. The Panel finds that
such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000)
(finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain
name to promote competing auction sites); see also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website
that competes with Complainant’s business).

Furthermore, Complainant argues that Respondent is using the domain


<goodmorningamerica.com>, which is identical to Complainant’s
mark, to operate a website featuring links and advertisements to
various third parties. The Panel finds that consumers searching for
Complainant online would become confused as to Complainant’s
affiliation with the resulting website, and that Respondent takes
advantage of such confusion. Thus, the Panel concludes that
Respondent’s opportunistic use of the domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar.
21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by
Respondent); see also State Fair of Texas v. Granbury.com, FA 95288
(Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website).

Moreover, the Panel finds that Respondent registered the disputed


domain name with either actual or constructive knowledge of
Complainant’s rights in the mark, due to Complainant’s incontestable
registration of the mark with the USPTO as well as to the immense
fame the mark has acquired through its use as the name of a popular
television program in the United States. Thus, the Panel concludes
that Respondent registered and used the
<goodmorningamerica.com> domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly
similar variation thereof.”); see also Yahoo! Inc. v. Ashby, D2000-0241
(WIPO June 14, 2000) (finding that the fame of the YAHOO! mark
negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name).

Laches

The panel also rejects Respondent’s argument of laches. Laches


requires not only a delay in asserting rights but, among other things,
also reliance on the mark owner’s inaction and a prejudice to the other
party resulting from such inaction1[1]. Assuming that laches is even a
proper argument in this context2[2], the Panel finds no evidence of
reliance by Respondent on Complainant’s inaction nor any prejudice to
Respondent, no evidence having been presented which would
indicated that the loss of the domain <goodmorningamerica.com>
would prejudice Respondents efforts to develop and market a “good
news” website of the type described in its Response, or which indicates
how loss of this domain would adversely affect Respondent’s current
parking website directory that contains only links that are unrelated to
the term “good morning America.”

1[1]
Courts generally weigh several factors in a trademark laches analysis such as 1) length of delay, 2) excuse(s), if
any, for the delay, 3) degree and extent of infringer’s reliance on mark owner’s inaction, 4) degree of intent in the
infringement, 5) strength of the mark, 6) likelihood of confusion, and 7) harm to the parties from denial or granting
of relief. 3-11 Trademark Protection and Practice § 11.08.
2[2]
Panels have held that the Policy does not consider laches to be a viable defense. See Square Peg Interactive, Inc.
v. Naim Interactive, Inc. FA 209572 (Nat. Arb. Forum Dec. 29, 2003), wherein it was stated that “laches by itself is
not a defense to a complaint brought under the Policy.” See also, E.W. Scripps Co. v. Sinologic Indus., D2003-0447
(WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches. This accords with the basic objective of
the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes
relating to egregious misuse of domain names. The availability of defences such as laches could result in significant
delay and expense.")
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 <goodmorningamerica.com>


domain name be TRANSFERRED from Respondent to Complainant.

David S. Safran, Panelist


Dated: March 3, 2005

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