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Shop TV v. Mind Ta2, Inc. [2000] GENDND 1740 (15 December 2000)

National Arbitration Forum

DECISION

Shop TV, Inc., )

Complainant, )

)

v. ) Claim Number: FA0011000096124

Mind Ta2, Inc., )

)

Respondent. )

PARTIES

The Complainant is Shop TV, Inc., ("Complainant"), whose representative is Ken Bagus, 880 South Franklin Street, Denver, CO 80209. The Respondent, Mind Ta2, Inc., ("Respondent") is located at 2363 Kerwood Avenue, Los Angeles, CA, 90064, whose representative is Michael Weiner, whose address is given as that of the Respondent.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "shoptv.com", registered with Register.com.

PANELIST

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

PROCEDURAL HISTORY

Complainant submitted a Complaint, dated November 27, 2000, to the National Arbitration Forum ("The Forum").

On December 1, 2000, Register.com confirmed by e-mail to The Forum that the domain name "shoptv.com" was registered with it and that the Respondent is the current registrant of the name. Respondent has by its registration agreement agreed to resolve domain-name disputes brought by third parties in accordance with the Uniform Dispute Resolution Policy (UDRP) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).

On December 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@shoptv.com by e-mail.

Pursuant to Complainant’s request to have the dispute decided by a One Member panel, on December 8, 2000, the Forum appointed Robert R. Merhige, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it first used its mark SHOP*TV in commerce on October 21, 1993 and that on August 1, 1995, the United States Patent and Trademark Office registered registration no. 1,909,018 for the SHOP*TV service mark to it in connection with the provision of "telephone shop at home services and mail order services featuring all merchandise that can be directly purchased by customers responding to electronic or printed advertising in International Class 42." Complainant further contends that Respondent has no right in the domain name at issue and that the domain name in issue is identical to its incontestable registered mark SHOP*TV and at the least is confusingly similar to Complainant’s mark.

Complainant contends that it does business internationally and that the SHOP*TV mark is recognized world-wide in the retail industry.

B. Respondent

Respondent contends Complainant’s assertion that the domain name in issue has been registered by the Respondent is being used in bad faith is not supported as a matter of law. Respondent contends that Complainant’s mark is simply a design trademark and that he has a legal right to the registration and use of the domain name in issue.

FINDINGS

The record reflects and I find that on August 1, 1995, the United States Patent and Trademark Office issued registration no. 1,909,018 for the service mark SHOP*TV to Complainant in connection with the provision of "telephone shop at home services and mail order services featuring all merchandise that can be directly purchased by customers responding to electronic or printed advertising in International Class 42."

I further find that Complainant’s first use of the mark in commerce commenced on October 21, 1993, and has been utilized, by the Complainant, and that the mark has become distinctive of the goods/service aforementioned through the Complainant’s substantially exclusive and continuous use in commerce for at least five years immediately before August 28, 2000.

The record further reflects that the Respondent has made no demonstrable preparations to use the domain name shoptv.com or a name corresponding to the domain name shoptv.com in connection with a bona fide offering of goods or services.

I find that the Respondent was aware of the trademark bearing registration no. 1,909,018 at least since April 10, 2000.

In addition, the record reflects that Respondent is not making any legitimate non-commercial or fair use of the domain name and has advertised through an affiliate the domain name shoptv.com as available for sale.

The evidence establishes that an affiliate of Respondent, Selfish, Inc., registered the domain name shoptv.com on or about September 8, 1998. Selfish, Inc., is a California corporation whose registered agent is Michael Weiner. The address given for Selfish, Inc., and Michael Weiner as registered agent, is precisely the same.

The record further reflects that an entity named DomainDealer.com, which I find to be affiliated with the instant Respondent, advertised shoptv.com as then available for purchase.

The record further reflects that on about November 3, 2000, the domain name shoptv.com was transferred to Respondent.

The record satisfies the undersigned that the named Respondent in this cause is an affiliate of Selfish, Inc. and DomainDealer.com and further that Selfish, Inc., registered or attempted to register in excess of 150 separate trademarks and/or service marks which its affiliate, DomainDealer.com, has, as to some, including that which is the subject of this proceeding, offered for sale. I therefore conclude that the domain name in issue was registered and acquired by the Respondent and/or its affiliated entities primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark, the Complainant, or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. In short, the record satisfies the undersigned that the proposed sale of the domain name was offered as being currently available for purchase. The entity designated as DomainDealer.com asserts itself as being the "dealer of domain names," an obvious profit seeking business operated by an affiliate of the Respondent.

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

Complainant properly contends that the domain name in question is identical and confusingly similar to the incontestable registered mark SHOP*TV owned by Complainant. The slight and insignificant difference is that Complainant’s mark does not include the top-level ".com" designation, a fact which does not preclude a finding of "identical and/or confusingly similarity." Vertical Solutions Management, Inc. v. WebNet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 6, 2000), see also NetLearning, Inc. v. Dan Parisi, FA 95471 (Nat. Arb. Forum Oct. 16, 2000). The record reflects as well that a potential customer of Complainant expressed the view that in an attempt to purchase goods from Complainant, he had visited the domain SHOP*TV.com under the erroneous assumption that the domain name was a property of Complainant. Hence, that aspect of the requirement of paragraph 4(a)(i) of the Policy as being confusingly similar to a trademark or service mark in which the Complainant has rights is satisfied.

The record reflects as well that to date the only utilization by the Respondent of the name in issue is that Respondent has advertised the domain name as being available for sale.

Rights or Legitimate Interests

The record also reflects that Respondent has no rights or legitimate interests in the name in issue and has failed to provide a product or service or develop a web site offering the name in issue for the purpose of so providing. In short, it was and is being held by Respondent for the sole purpose of selling same. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO March14, 2000); see also M&T Quality Restaurant Supply v. Your Name Here, FA 95416 (Nat. Arb. Forum, September 29, 2000).

It is to be noted that in a verified aspect of Respondent’s response to the Complaint herein is a statement to the effect that a lady friend of the chief executive officer of DomainDealer.com told a co-worker – apparently her superior – that her boyfriend Michael Weiner was attempting to develop the site SHOP*TV.com "was shopping for a partner in the entertainment industry." I find this to be too weak a reed to warrant a conclusion of demonstrable preparations to use the domain name for the bona fide offering of goods or services. I conclude as well that the Respondent hasn’t any legitimate interest in the domain name in issue.

Registration and Use in Bad Faith

As heretofore indicated, as early as August 1, 1995, the United States Patent and Trademark Office registered registration no. 1,909,018 for the SHOP*TV service mark owned by the Complainant herein. The record further reflects that said registration was known to Respondent at the time of his registration of the domain name in issue.

Correspondence between the parties indicates an effort on the part of Respondent to justify his unwarranted use of Complainant’s trademark premised on the advice of an attorney (unnamed) that he was free to do so. Standing alone, such an assertion will not suffice to excuse Respondent’s use of the registered mark. In the view of the undersigned, this constitutes bad faith, and I so find.

DECISION

For the reasons herein stated, it is adjudged as follows:

It is DIRECTED that the registration of the domain name "shoptv.com" be forthwith transferred to the Complaint.

Robert R. Merhige, Jr.

Retired Judge

Arbitrator

Dated: December 15, 2000