Generic Top Level Domain Name (gTLD) Decisions

UNC-TV
COMPLAINANT,

vs.

Gary Tilton
RESPONDENT.

DECISION
Forum File No.:  FA005000094805

The above-entitled matter came on for an administrative hearing on June 7, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of  UNC-TV, hereafter “Complainant” against Gary Tilton, hereafter "Respondent.". There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names:                                    UNCTV.COM

Domain Name Registrar:                       Network Solutions

Domain Name Registrant:                     Gary Tilton

Date of Domain Name Registration:      April 2, 1999

Date Complaint Filed:                           May 10, 2000 

Response Due Date:                             May 31, 2000

            The Complainant filed its complaint with the National Arbitration Forum on the above-referenced date.  In compliance with the rules, The Forum transferred the Complaint to the Respondent on May 11, 2000. The Respondent did not submit a response to The Forum within twenty (20) days pursuant to the rules.

            That the Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with said Registrar, Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

                                          FINDINGS OF FACT

            The manner in which the domain name(s) are identical or confusing are set out herein below:

            The University of North Carolina Center for public Television (UNC-TV) is a constituent of the University of North Carolina system, and has been in existence since 1789.  Since 1955 UNC-TV has operated as the statewide Public Television Network for North Carolina.  UNC-TV, text only, is associated with Television Broadcasting Services.  This mark was first used in commerce on 11/01/1993.  Application was made on January 6, 2000 for registration of this service mark with the US Patent office.  Serial number 75/885042 was assigned to the application for registration.  Prior to January 6, 2000, UNC-TV claimed common-law rights in this service mark based on the continuous use of the name for the past seven years in all aspects of its day to day organization operation.  Since 1993, this organization has used UNC-TV as its official name in all aspects of public business, including on-air broadcast, publicity materials, business letterhead, and the monthly program guide.  The branding effort behind the is extensive and costly, amount to several million dollars in on-air and print advertising alone.

            The domain name unctv.com is confusingly similar to UNC-TV, the only differences being the .com extension and the hyphen.  In a graphical representation, the hyphen is omitted and a circular symbol used instead, further blurring the difference between the names.  UNC-TV maintains it's chief internet presence on the unctv.org domain, including its main website at www.unctv.org.  UNC-TV maintains references from unctv.net, unc-tv.org, unc-tv.com and unc-tv.net to www.unctv.org.  Given the familiarity of the.com extension, users, especially children, can be easily confused at not finding the UNC-TV website when using unctv.com

            The Respondent, Gary Tilton, was previously employed with UNC-TV and ceased his employment on October 14, 1994.  Respondent has no current formal association with UNC-TV, is not himself known, nor has any business interests known by the name UNC-TV.

            The domain name unctv.org was registered by Complainant on August 23, 1994, which is prior to the date Mr. Tilton ceased his employment with UNC-TV.  On May 11, 1998, UNC-TV registered the unc-tvv.org domain and recently registered unc-tv.net, unc-tv.com, and unctv.net, in order to provide consistent use of the UNC-TV name. 

            When the Respondent registered the domain name unctv.com, he was clearly aware that the name was in use.

            Since the registration of the domain name by the Respondent, he has displayed websites on the domain indicating that the domain name was for sale for amounts clearly well beyond the expenses associated with registered the domain.  In July, 1999, UNC-TV offered the Respondent $750.00 for the domain.  Comments received by UNC-TV viewers and staff indicate that the site was not going unnoticed and an effort was made to purchase the domain name to end the matter. 

No response was made to Complainant's offer.  In January, 2000, the unctv.com website was altered to include a pornographic image. 

            As much of UNC-TV's programming is geared toward children, and the possibility existed that children may stumble on to the pornographic site, Complainant felt it was necessary to take some action.  On January 6, 2000, UNCTV's attorney sent a letter asking the Respondent to cease and desist uses of the domain and offered to pay reasonable expenses associated with the transfer of the domain to UNC-TV.  A response was received from the Respondent via e-mail to one of the staff members in the Respondent's former department to the effect that he had received a "threat" from the company lawyer and if UNC-TV was interested in the site, the price would be $5,000.  He also stated that he had decided to sell the site as soon as possible and had several adult vendors that were interested in the site as a great traffic generator.  Since that time, the site has been modified to contain a less inflammatory image.

            It appears that the Respondent has made no commercial or fair use of th unctv.com domain.

                                                                CONCLUSIONS

            The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:

            The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant.  For that reason, the undersigned decides that:

a.         The domain names as registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

b.         the Respondent has no rights or legitimate interests in respect of the domain names;  and

c.         the Respondent domain names have been registered and are being used in bad faith.

            It is therefore just, right and proper that the domain name UNC-TV.com be transferred to the Complainant.

DECISION

            Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

            THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME UNCTV.COM REGISTERED BY RESPONDENT, GARY TILTON, BE TRANSFERRED TO COMPLAINANT, UNC-TV.

Dated: June 8, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator