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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Phillips International, Inc. v. Rao Tella
Claim Number: FA0008000095461
PARTIES
The Complainant is Phillips International, Potomac, MD, USA ("Complainant"). The Respondent is Rao Tella, Ann Arbor, MI, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "VIASATELLITE.COM," registered with Network Solutions Inc. ("NSI").
PANELIST(s)
The Panelist 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 the panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/18/2000; The Forum received a hard copy of the Complaint on 08/18/2000.
On 08/21/2000, NSI confirmed by e-mail to The Forum that the domain name "VIASATELLITE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").
On 08/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/11/2000 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@viasatellite.com by e-mail.
On 09/11/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist. The Panelist received information which was not submitted in accordance with the Rules and did consider that material.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The domain name "VIASATELLITE.COM" is identical and confusingly similar to Complainant’s mark. Complainant has used the mark in commerce since October 5, 1985, and it registered its "VIA SATELLITE" trademark with the United States Patent and Trademark Office on May 5, 1992.
2. Respondent has no rights or legitimate interest in the domain name for he has not satisfied any of the factors listed in Paragraph 4(c) of the Policy.
3. Respondent registered and is using the domain name in bad faith as evidenced by his non-use of the domain name in issue for more than twenty months.
B. Respondent
1. The domain name "VIASATELLITE.COM" is not confusingly similar to Complainant’s mark. Indeed, "VIA" and "SATELLITE" are generic terms used in connection with many products and services.
2. Respondent registered the domain name in issue on January 11, 1999, prior to any attempted registration by Complainant, and, accordingly, has rights and a legitimate interest in the domain name.
3. Respondent had no intent to deceive and he did not register nor is he using the domain name in bad faith. He has not used the name because he is involved in design development and testing of a website, and the domain name will be active when the preliminaries are completed.
FINDINGS
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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) 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) the 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
In the Panelist’s opinion, Complainant’s trademark and the domain name in issue are confusingly similar.
It has been held that the ".com" top level domain indicator normally is of no importance in distinguishing the marks. [See, Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir., 1999) [1999] USCA9 225; 174 F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558.]
Moreover, Claimant’s mark clearly has acquired a secondary meaning, at least to its 22,000 magazine subscribers.
Respondent’s claim that the mark is generic, accordingly, is without merit.
Rights or Legitimate Interests
It is of interest to read Professor McCarthy’s commentary as follows (4 McCarthy, Trademarks and Unfair Competition [4th ed., updated 6/2000] 25-164 - 25-165):
Somehow, Internet folklore has created the mis-impression among some users that once one obtains an ‘officially registered’ domain name from a local registrar, then that name can thereafter be used in any way without legal consequences. This is an unfortunate bit of misinformation. A domain name registrar that reserves domain names cannot license a domain name user to commit the tort of trademark infringement or unfair competition. Thus, a ‘first-come-first-served’ policy of a registrar ‘cannot trump federal [trademark] law.’
Of course, here, Complainant registered its trademark long before Respondent registered the domain name.
In any event, turning to the "Policy," which here must be applied, we find that Paragraph 4(c) informs a Respondent that, without limitation, has rights to and legitimate interest in the domain name which may be demonstrated, for purposes of Paragraph 4(a)(ii), as follows:
(i) before any notice to you 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 fide offering 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.
Factors (ii) and (iii) clearly are not applicable.
Because the evidence presented to the Panelist indicates that Respondent has not actually used the domain name for a long period of time, the crucial question presented as to factor (i) is whether he has made "demonstrable preparations to use" the domain name.
Professor McCarthy in his treatise, Trademarks and Unfair Competition, cited supra, in sections 19:14 - 19:17, indicates that "demonstrable preparations" require an objective analysis and a written business plan.
Respondent has attempted to support this requirement through his Exhibit B.
In the Panelist’s opinion, however, objectively, and despite Respondent’s supplications, he has not crossed the required threshold of proof.
It is determined, accordingly, that Respondent does not have rights or legitimate interests in the domain name in issue.
Registration and Use in Bad Faith
It must follow that the flip side of the lack of rights or legitimate interest in a domain name is "registration and use in bad faith."
Respondent argues that he did not know of Complainant’s trademark when he registered his domain name.
Again, turning to Professor McCarthy’s work, cited supra, at pages 25-211 - 25-212, he speaks of the analogous "Reasonable Belief Defense" set forth in the Anticybersquatting Consumer Protection Act ("ACPA") [15 U.S.C. §1125(d)(1)(B)(ii)], as follows:
The "Reasonable Belief" Defense. Lanham Act §43(d)(1)(B)(ii) creates an unusual defense to cybersquatting liability if the court determines that the defendant "believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." This might be dubbed the "pure heart and empty head defense" because it might appear to reward the cybersquatter who intended no harm and mistakenly thought that his or her conduct was lawful. This defense has the potential to reward both the ignorance of the law and unawareness of the fact that cybersquatting violates widely accepted standards of fair competition. Therefore, a court should, in the author’s view, make use of this "reasonable belief" defense very sparingly and only in the most unusual cases. That is, the court should place emphasis on the phrase "had reasonable grounds to believe" that the conduct was lawful, focusing primarily upon the objective reasonableness and credibility of the defendant’s professed ignorance of the fact that its conduct was unlawful. Otherwise, every cybersquatter would solemnly aver that it was entitled to this defense because it believed that its conduct was lawful. [Emphasis in original.]
Had Respondent made a simple trademark check, the problem here presented would have been obviated.
The Panelist has concluded that the domain name in issue was registered in bad faith.
He is troubled, however, by the ultimate question as to whether the domain name under the circumstances here presented is being "used in bad faith." The question, worthy of a Talmudic scholar, is: "How can ‘non-use’ become ‘use?’"
The problem is pointed up by Paragraphs 4 and 5a of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, relating to abusive registration, submitted for the Board Meeting of October 24, 1999, where it is stated:
These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrators-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO. [Emphasis in original.]
It is to be noted that Paragraph 4(b)(iv) of the Policy does provide:
. . . by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain name. It makes no sense whatever to wait until he actually "uses" the name, when inevitably, when there is such use, it will create the confusion described in the Policy.
Under this circumstance, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. [Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp.1070.] The threatened harm is "use."
The Panelist, thus, has determined that there is bad faith use by Respondent even though a website has not been activated.
DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name "VIASATELLITE.COM" registered by Respondent Rao Tella shall be transferred to Complainant Phillips International, Inc.
Judge Irving H. Perluss (Retired)
Dated: September 21, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1131.html