Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hollywood Network, Inc., Beverly Hills, CA, USA ("Complainant"). The Respondent is Video Citizen Network, Los Angeles, CA, USA ("Respondent").

The domain name at issue is "hollywoodnetwork.tv", registered with dotTVCorporation.

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

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 30, 2000; The Forum received a hard copy of the Complaint on November 14, 2000.

On Nov 10, 2000, dotTVCorporation confirmed by e-mail to The Forum that the domain name "hollywoodnetwork.tv" is registered with dotTVCorporation and that the Respondent is the current registrant of the name dotTVCorporation has verified that Respondent is bound by the dotTVCorporation N/A registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 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@hollywoodnetwork.tv by e-mail.

On December 13, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

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

Complainant objects to Respondent’s registration of "hollywoodnetwork.tv" in that the name is identical or confusingly similar to its business name, "Hollywood Network," its service mark registered with the U.S. Patent and Trademark Office on February 11, 1997 and its current domain names with websites at www.hollywoodnetwork.com, www.hollywoodnetwork.net and www.hollywoodnetwork.org. Further, Complainant alleges that Respondent has no right or legitimate interest in the domain name and has registered and is using it in bad faith.

B. Respondent

Respondent claims that "hollywoodnetwork.tv" is not identical to or confusingly similar to Complainant’s .com, .net and .org versions of the domain because the new top level domains ("TLD"s) "…are creating communities and areas that are clearly differentiated from one another." Further, Respondent claims that "hollywoodnetwork" is generic and descriptive and not entitled to protection. Preparations to use the www.hollywoodnetwork.tv domain and website by Respondent at the time of registration and for a few weeks thereafter are claimed by Respondent to satisfy the "rights or legitimate interests" requirement of paragraph 4. a. (ii) of the Policy. Finally, Respondent denies all of the Policy indicia of bad faith.

Respondent would have the Panel accept the proposition that registration of someone else’s registered trademark as a ".tv" domain name is not violative of ICANN Policy because the new TLDs have created new communities which are clearly differentiated from the original TLDs. No authority is cited for that position and this Panelist is aware of none holding either way. However, ICANN policy to provide protection for trademark owners in certain defined circumstances and the clear rights of a registered service mark owner to be protected from infringers militate in favor of finding that "hollywoodnetwork.tv." is the same as or confusingly similar to Complainant’s service mark. The inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar. . See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

As to Respondent’s claims that the mark in question is generic and descriptive, it is to be presumed that those issues were considered and disposed of in the examining process at the U.S.P.T.O. prior to registration. This Panelist will not second-guess in light of the lack of authority or evidence presented by Respondent on the subject.

It does not appear that Respondent has rights or legitimate interests in the domain name which would justify retention by Respondent of the domain at issue. Respondent is not commonly known by the domain name in question but is known by the domain name "videocitzen.com." Respondent was not prepared to use the www.hollywoodnetwork.tv in connection with a bona fide offering of goods or services at the time of registration of the name of within a few weeks there after. See Hartford Fire Insurance Company v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent was aware of Complainant’s use of the .com, .net and .org variations of the domain prior to registration of the .tv variation. Considering the simplicity with which one can do a free trademark search on the Internet and the obvious prior use of "hollywoodnetwork" by Complainant, it appears that Respondent acted intentionally in adopting the mark of Complainant in the .tv domain name at issue. This scenario, together with Respondent’s email admonishing Complainant not to contact him with an offer for the domain name, "…unless the offer reflects appropriate market value," strongly suggests bad faith in the premises. See, Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

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.

The "hollywoodnetwork.tv" domain name at issue is identical and/or confusingly similar to Complainant’s service mark, "Hollywood Network."

Respondent has no rights or legitimate interests in the domain name at issue.

Respondent has registered and is using the domain name at issue in bad faith within the meaning of ICANN Policy.

This Panel directs that the domain "hollywoodnetwork.tv" be transferred from Respondent to Complainant.