Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Sony Corporation, Tokyo, Japan ("Complainant") represented by Robert B.G. Horowitz, of Cooper & Dunham, LLP. The Respondent is Times Vision, Ltd, Ft. Lauderdale, FL, USA ("Respondent") represented by Lisa C. Cohen, of Schindler, Cohen, & Hochmann LLP.

The domain name at issue is JUMBOTRON.COM, registered with Network Solutions.

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panel in this proceeding.

Tyrus R. Atkinson, Jr., Howard C. Buschman III, and James P. Buchele, as the Panel.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 25, 2000; the Forum received a hard copy of the Complaint on September 25, 2000.

On September 27, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name JUMBOTRON.COM is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 September 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@jumbotron.com by e-mail.

On October 16, 2000, the Forum granted an extension of time for the Respondent to submit a response. On October 25, 2000 the Forum was notified that the parties were exploring settlement opportunities. The parties agreed that due to settlement discussions, Respondent’s time to respond should be extended until November 16, 2000. On November 16, 2000 the parties again requested a stay due to settlement discussions. On December 20, 2000 the Complainant requested to have the stay removed and the Complaint reinstated, setting a deadline of January 10, 2001 by which Respondent could file a Response to the Complaint. On January 11, 2001, a final extension was granted to the Respondent, setting a deadline of January 17, 2001 by which Respondent could file a Response to the Complaint. A timely response was received from the Respondent and determined to be complete on January 17, 2001. Complainant filed an Additional Response on January 26, 2001. Respondent filed an Additional Response on January 25, 2001. Both Complainant and Respondent raised issues by letters to the Forum dated January 26, 2001 and January 29, 2001. The issues were reserved for Panel decision in the Forum’s Order Referring Case to Panel For Consideration dated January 29, 2001. The Panel, by Order dated February 8, 2001, resolved certain issues and granted Respondent additional time to file a response to Complainant’s Additional Statement and Respondent was invited to submit further statements, under Rule 12, relating to certain issues. Respondent filed its statement in response to the Panel’s questions and in response to Complainant’s additional submission on February 12, 2001. Further submissions and letters were received by the Forum after February 12, 2001. The Panel requested no additional submissions nor are they authorized under the Policy and Rules. None of the submissions received after February 12, 2001 was considered by the Panel in rendering this decision.

Pursuant to parties’ request to have the proceeding heard by a Three-member Panel, on January 30, 2001, the Forum appointed Tyrus R. Atkinson Jr., Howard C. Buschman III, and James P. Buchele, as Panelists.

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

A. Complainant

Complainant is a world leader in the field of television and video products.

Complainant has used its "JumboTron" trademark in connection with large television screens since as early as September 1, 1985.

The "JumbTron" trademark was registered in the United States of America by Complainant on October 24, 1989. The registration is incontestable and in full force and effect.

"JumboTron" is a mark coined by Complainant. It is well and favorably known and famous mark.

Over the past four years, Complainant’s advertising and promotion expenses for its "JumboTron" goods were approximately $1 million in the U.S. and $2 million worldwide. Complainant has sold 240 JUMBOTRON in the United States and 460 units worldwide.

The "JumboTron" trademark is unique; there are no other "JumboTron" per se or formative marks registered in the United States.

Respondent’s domain name is identical to Complainant’s "JumboTron" trademark

Respondent is a customer of Complainant. Respondent operates a business of renting large screen displays. Respondent rents not only Complainant’s screens but also rents screens of three of Complainant’s direct competitors. The web site operated by Respondent is WWW.JUMBOTRON.COM, registered by Respondent on March 3, 1998.

Respondent is aware of Complainants use of the "JumboTron" trademark since Complainant’s "JumboTron"screens are offered for rental by Respondent and featured on the JUMBOTRON.COM website.

Respondent has no rights or legitimate interests in the name JUMBOTRON and registered the domain name in bad faith.

Complainant mailed a cease and desist letter to Respondent dated May 11, 2000, to which no response was made. A follow up letter was sent on June 7, 2000. No response was received.

B. Respondent

Jumbo-sized electronic video displays are used all over the world for various events. Such screens are prohibitively expensive and thus there is a large market for rentals. Respondent has become one of the most recognized and respected video display rental companies in the world.

In March 1998, in order to take advantage of the Internet’s growing importance, Min Hwang registered the domain name JUMBOTRON.COM for the named Respondent, Times Vision, Ltd. When Hwang joined XL Video, Inc. in 1999, the JUMBOTRON.COM domain name was acquired by XL Video, Inc.

XL Video, Inc. is the true party in interest as Respondent in this case. XL Video, Inc., as the acquiring company of the named Respondent, Times Vision, Ltd., has filed its Response in behalf of Times Vision, Ltd, and makes no issue as to the fact that this Complaint is filed against Times Vision, Ltd. rather than XL Video, Inc.

The domain name was chosen because JUMBOTRON expresses the entire category of all jumbo-sized electronic screens in the industry, including LED video display screens, CRT screens, video walls, and plasma screens. Panasonic’s AstroVision, Mitsubishi’s Diamond Vision, and Saco’s SmartVision are all jumbo-sized electronic screens, and all are referred to in the industry and in the press as "Jumbotrons." The web site at JUMBOTRON.COM clearly states that Respondent rents jumbo-sized video display screens from many different manufacturers, listing AstroVision(Panasonic), DiamondVision(Mitsubishi), SmartVision(Saco), and Jumbotron(Sony).

Complainant does not rent jumbo-sized video equipment and therefore does not compete with Respondent. Respondent is a customer of Complainant.

The word "jumbotron" is used by the public to refer to any giant screen, not just Complainant’s "JumboTron". It is the very generic use of the term "jumbotron" that led Respondent to choose the term JUMBOTRON for its domain name.

There is no evidence of confusion. The web site claims no affiliation with any manufacturer. No evidence of confusion is present.

Respondent has a legitimate interest in the domain name. The domain name has been in use since March 1998, well before the dispute and Respondent uses it for a bona fide offering of goods and services. Respondent has been known to its customers and vendors by that domain name since it was first used.

There is no evidence that Respondent has any intent to divert customers from Complainant or to tarnish the trademark.

Complainant’s delay of three years in disputing Respondent’s use of the domain indicates Complainant’s belief of an absence of confusion.

Respondent registered and has used the domain name in good faith.

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) 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.

Complainant contends and Respondent concedes that the trademark "JumboTron" and the domain name JUMBOTRON.COM are identical. Complainant has shown that it has rights in the name "JumboTron" by means of the registration of the trademark and the promotion and use of the trademark. Complainant prevails on this issue.

Respondent’s contention that the word "jumbotron" is a generic term, would, if proved, make a case that Complainant has no rights in the mark "JumboTron" and thus should not prevail upon this issue. Respondent’s position will be discussed in the next section.

Complainant shows that it coined the mark "JumboTron" and that the trademark is now incontestable. It contends that no permission was given to Respondent to use the mark. A cease and desist letter was mailed to Respondent directing that the domain name containing the trademark be no longer used by Respondent.

Under this factual situation, the burden must shift to Respondent to show that it has rights and legitimate interests in the domain name. The Uniform Domain Name Dispute Resolution Policy provides Respondent with ways to demonstrate that it has rights and legitimate interests in the domain name. See Policy ¶ 4(c).

Respondent contends that its has a legitimate interest in the domain name and that it is not acting in bad faith in using the domain name because the term JUMBOTRON has become generic. JUMBOTRON is now synonymous with all giant video displays, it is contended.

Complainant has been too successful in planting the name JUMBOTRON in the public consciousness, it is contended. Its trademark has lost it distinctiveness and become generic. See Interactive Television Corp. v. Noname.com, D-2000-0358 (WIPO June 26, 2000).

"Marks that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the genus of which the particular product is a species…Generic terms are not registrable, and a registered mark may be cancelled at any time on the grounds that it has become generic." Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189, 194 (1985).

Complainant objects to the Panel considering Respondent’s generic name contention. "…(N)either the ICAAN Policy or Rules nor this Forum’s Supplemental Rules contain provision allowing for an Arbitration Panel to decide whether a registered trademark has become generic, nor is a standard for doing so provided." Complainant’s Additional Response, page 3, 4.

While this may be true, Panels have considered the generic nature of domain names on a number of occasions. See as examples, Robus v. Suard, D2000-0941 (WIPO Dec. 6, 2000); Welltec ApS v. Gardner, D2000-1145 (WIPO Oct. 31, 2000); Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-00427 (WIPO Aug. 24, 2000); Interactive Television Corp. v. Noname.com, supra.

The Supreme Court of the United States held that in a court case to enjoin infringement of a registered, uncontestable trademark, that such an action may not be defended by the adverse party on the grounds that the mark is merely descriptive. Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189 (1985). That reasoning suggests that in domain name disputes, such as this one, where the Complainant has a registered and incontestable mark, that Respondent should not be permitted to defend the domain name dispute on the grounds that the mark is merely descriptive or generic as to the issue of rights and legitimate interests. As the Supreme Court stated, an incontestable mark that becomes generic may be cancelled at any time pursuant to the Lanham Act. That cause of action places the burden of proof on the party seeking cancellation. That is the proper method for resolving such a controversy. Two members of this Panel are of the opinion that in a case where a coined, arbitrary mark has been registered and has become incontestable, no Respondent should be permitted to raise the defense of the mark being generic or having become generic as to the issue of whether Complainant or Respondent has legitimate rights or interests in the mark.

However, since previous Panels have considered the generic defense in other domain name disputes, for the sake of consistency, the generic defense will be considered here on the merits.

Respondent does not challenge the fact that "JumboTron" is a coined mark registered by Complainant and that the mark has become incontestable. Respondent does not contend that the mark was generic when registered. See Park ‘N Fly v. Dollar Park and Fly, Inc., supra. Respondent contends that the mark has become generic since its registration. If that can be shown by Respondent then Complainant has no established trademark rights or service mark rights. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000).

Respondent presents several affidavits to support its position.

Min Huang, an account executive in the employ of Respondent states that even though he knew that Complainant sold jumbo-sized screens under the name "JumboTron," he registered the domain name JUMBOTRON.COM because he knew that the word "jumbotron" is used by the general public to describe the entire category of all such equipment. Huang attaches numerous published articles, which refer to jumbotron giant screen displays. In a few instances, the articles identify as jumbotrons, giant screens manufactured by Complainant’s competitors. For the most part, the articles simply refer to jumbotrons. Respondent points out that the name Sony does not appear in these articles, only the word jumbotron. That does not clearly establish that the person using the word "jumbotron", in the article or publication, was not using it to refer to Complainant’s "JumboTron" giant screen displays. In a few exhibits, announcers refer to the giant screen display as a "jumbotron" when Complainant did not manufacture the screen. No clear distinction can be drawn as to whether the announcer incorrectly assumed the screen was Complainant’s product or was using the term in a generic sense. Jeremy M. Weintraub made an affidavit wherein he states that he acquired many of the published articles presented by Respondent by making a LEXIS Search for all articles that contain the word "jumbotron" but not "sony." These results, he opines, are proof that jumbotron is used generically. This Panel cannot accept that when a person refers to a "jumbotron" but does not also use the name "Sony" that the term "jumbotron" is being used generically. Complainant argues that the use of "jumbotron" in the manner shown by Respondent is consistent with the use being in a trademark sense and not a generic sense. It cannot be definitely determined in which manner the person was using the term in most of the examples submitted by Respondent.

The Affidavit of William DuLaney was presented. DuLaney worked for Panasonic several years ago, then Saco Smartvision, both giant screen manufacturers. He states that in spite of Panasonic’s efforts to market the name of its product and achieve its own brand recognition, its customers and the general public continually used the word "jumbotron" to refer to every large video display system, including Panasonic’s "AstroVision." The inference cannot be fairly drawn that because Panasonic has not been able to achieve brand name recognition to compare to Complainant’s brand name recognition, that Complainant’s mark has become generic. The general public may well have Complainant’s product in mind when the word "jumbotron" is used in the manner described by DuLaney.

Ted E. Dickson, a former employee of Complainant made an affidavit wherein he states, "My Division at Sony was very much aware of the generic use of the word, and we enjoyed the free marketing that we received from the generic use of the word ‘jumbotron.’ We also enjoyed the fact that our competitors were frustrated that their products were called ‘jumbotrons’ by the press and the public." One must conclude that if Sony "enjoyed the free marketing" of the word "jumbotron" that Complainant was receiving an economic benefit from the use of the mark. If the mark were generic, how would its use help the marketing of Complainant’s "JumboTron" screens? Why would the competitors of Sony be frustrated by use of a generic term? No proper inference can be drawn from this Affidavit that the mark has become generic. The inference can be drawn that this witness misunderstands the meaning of the word "generic." If one associates giant screen displays with the Sony "JumboTron" screen, that, it would appear, is what Complainant means to accomplish with its promotion of the mark. Such an association made in the minds of the public does not make the mark generic.

It is to be noted that the Affidavits of Dickson, DuLaney and Hwang are in the nature of opinion evidence. Each gives his opinion that "Jumbotron" is used as a generic term by the public and the industry. Complainant objects to these Affidavits on the grounds that each person giving this opinion has a bias and interest adverse to that of Complainant. These issues cannot be adequately addressed in this proceeding. Nor can the Complainant inquire as to the basis, experience or qualifications upon which the opinion testimony is based. If the Affidavits are presented as expert testimony, then each should show that the testimony is based upon sufficient facts or data, the testimony is the product of reliable principles and methods, and the witness has applied the principles and methods reliably to the facts of the case. Federal Rules of Evidence, Rule 702. If the Affidavits are offered as lay witness testimony, it should not be based upon scientific, technical, or other specialized knowledge within the scope of Rule 702. Federal Rules of Evidence, Rule 701. The Panel applies the principles stated in the Federal Rules of Evidence under the Panel’s authority to use "any rules and principles of law that it deems applicable." ICANN Rule 15(a). Some measure must be used and the Federal Rules of Evidence seems a reasonable source. The Affidavits of Dickson, DuLaney and Hwang are not supported by sufficient facts and data nor do they exhibit reliable principles and methods upon which the opinions are based. The Affidavits do not contain the minimum requirements to sustain expert witness testimony and cannot be accepted as the sole proof that "Jumbotron" is a generic term. If the Affidavits are offered as lay witness testimony, the opinions will be given the credit such testimony deserves in a context such as the one here under examination. As lay witness opinion testimony, the Affidavits do not establish that the public uses the word "jumbotron" as a generic term.

Complainant offers the Affidavit of Todd W. Evans. He states that he performed a NEXIS News Group Database search for "jumbotron and sony." This search produced over a thousand publications. In these publications, the mark was used in the trademark sense as associated with Complainant’s giant screen displays. He states that he used the same search engine for Complainant’s competitors, "panasonic astrovision, mitsuibishi diamondvision and saco smartvision". He says that the word "jumbotron" never appears in the documents recovered from which he concludes that none of the competitors use the term "jumbotron" to describe their giant screen displays.

Complainant includes, as an exhibit, printouts of Respondent’s JUMBOTRON.COM webpage. Stated on the webpage is the following:

Each manufacturer is referred to by its mark. Astrovision, Diamond Vision and SmartVision Screens are not referred to as "Jumbotrons." Complainant’s mark is used by Respondent in its trademark sense. The evidence shows that Respondent distinguishes "JumboTron" from its competitors. Respondent’s web page raises the inference that Respondent does not believe that Complainant’s competitors would accept their products being referred to as "jumbotrons." It is clear that from the evidence presented by the parties that it has not been proved that the word, JUMBOTRON, has become generic.

Respondent relies on the holding in Rollerblade, Inc. v. CBNO and Ray Redican, Jr., D2000-00427 (WIPO Aug. 24, 2000). Respondent contends that the Rollerblade case is identical to this one. In Rollerblade, the Panel did not decide that Complainant’s mark has become generic. It found that the domain name was similar but not identical to the mark and that the domain name represented a generic term derived from Complainant’s mark (rollerblading). The Panel found that "Respondent has presented ample evidence that the term ‘rollerblading’ is now commonly used by third parties as a generic term for the sport of in-line skating." The Panel did not state what evidence it accepted as ample evidence. In this case Respondent has not presented what this Panel can accept as ample evidence that third parties commonly use the term "jumbotron" as a generic term. The Rollerblade facts and the decision process of that Panel are not identical to the factual situation of this case.

Respondent cites General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000). In that case Respondent prevailed because Complainant did not prove that Respondent had no legitimate rights or interests in the domain name "craftwork.com" because Complainant’s mark is not fanciful or arbitrary and that "craftwork" is in widespread use in a descriptive sense. "JumboTron" is fanciful or arbitrary. Respondent, the public or Complainant’s competitors, under the evidence, do not use Jumbotron in a descriptive sense in this case. The cited case is not on point.

Respondent cites in support of its position the case of The Energy Authority v. Maslowski, FA 95313 (Nat. Arb. Forum Sept. 19, 2000). In that case the issue was whether the word "TEA" would be protected when no state or federal registration of "TEA" was claimed by Complainant. "TEA" was found to be a generic word. There can be no useful comparison of generic words such as "tea" and a word like "JumboTron." The citation is no assistance to Respondent as authority for its position in this case. Respondent cites High Speed Productions, Inc. v. Thrasher Magazine, Ltd., FA 96099 (Nat. Arb. Forum Jan. 8, 2001) as authority supporting its position. In that case, both parties held registered trademarks in separate countries for the same mark. The first registering the domain name prevailed on the ground that there was insufficient evidence to find that Respondent knew of Complainant’s mark prior to registration of the disputed domain name. It this case Respondent admits that it knew about Complainant’s mark prior to registration of the domain name. In the cited case both parties had rights and interests in their respective marks. Here only Complainant can show such rights and interests. There is nothing in the cited case that supports Respondent’s position in this case.

Respondent relies on Primedia Special Interest Publications v. Treadway, D2000-0752 (WIPO Aug. 21, 2000). In that case it was found that the name "shutterbug" was a weak and diluted mark because it is a common descriptive term used extensively in the photography-related business and that the public did not associate "shutterbug" exclusively with Complainant or its magazine. "JumboTron" has not been proved to be a weak or diluted mark nor has it been shown that "JumboTron" is not associated exclusively with Complainant in this case. The citation is of no assistance to Respondent in this case.

The other cases cited by Respondent fail to support its position.

The Panel finds that the present case is more like the factual situations presented in cases such as Welltec ApS v. Dave Gardner, D2000-1145 (WIPO Oct. 31, 2000); Robus v. Suard, D2000-0941 (WIPO Dec. 6, 2000) and Marioff Corporation Oy v. Untra Fog AB, D2000-0521 (WIPO July 26, 2000).

In Welltec, the registered mark was "Well Tractors." Respondent registered the domain name "welltractor.com." Respondent contended that "welltractor" is a generic term widely used in the business sector. The Panel found that in order for genericness to be taken into account in an administrative proceeding it would be necessary to present convincing evidence showing that the words "well tractor" were obviously generic at the time of registration or that they have thereafter become generic through degeneration. Because of the registration of the mark and the lack of convincing evidence, Complainant prevailed. In Welltec, both Complainant and Respondent were in the tractor business. Complainant made tractors and Respondent used tractors to drill holes. Respondent was a prior customer of Complainant. The facts are somewhat like the "JumboTron" case. The Panel in Welltec was reluctant to permit a challenge to a registered mark on the ground that it had become generic except under obvious circumstances and with convincing evidence. The Panel in Welltec considered submissions from Respondent consisting of publications that Respondent believed clearly showed that the term "well tractor" was widely used in the business sector and the oil and gas industry generally for the device. Notwithstanding such evidence, the Panel in Welltec did not find that it was sufficient to constitute the powerful showing required to make the case for an obvious generic term sufficient to prevail against a registered mark. The Panel’s reasoning in Welltec seems to be the correct approach in these types of cases. The Panel in the "JumboTron" case considered publications that Respondent contended showed the generic use of the term "Jumbtron." But this Panel, like the Panel in Welltec, is reluctant to find a generic use of a registered mark except under obvious and convincing circumstances. The evidence presented by Respondent does not reach that level of proof.

In the Robus case the registered mark was "WORKKAMPER." Respondent registered the domain names "workkamper.com" and "workcampers.com" among other variations. "Workkamper" was found to be a coined term, the registration of which had become incontestable. Respondent contended that "workkamper" and "workcamper" were generic terms. Respondent presented search engine printouts and RV industry web sites offered as providing evidence of usage of "workcampers" in a generic sense. The Panel found some of the results to support Respondent and some of the results otherwise. The Panel concluded that the evidence failed to show that the trademarks had become generic. Complainant and Respondent in the Robus case had a similar business. Respondent knew of Complainant’s name before Respondent registered the domain name. The Panel in Robus placed the burden upon Respondent to prove the alleged loss of distinctiveness through generic meaning that must be the primary significance of the designation to prospective customers. The review of the search engine printouts and other evidence submitted by Respondent did not carry Respondent’s burden. Complainant prevailed and the domain names were transferred. The Robus case seems comparable to the "Jumbotron" case on the facts and outcome.

In the Marioff Corp. case, Complainant registered the trademark "Hi-fog" in at least 16 countries. Respondent registered the domain name "hifog.com." Respondent contended that the word "hifog" was a generic term for high-pressure water fog sprinkler systems and in support of the claim enclosed several examples that showed the generic use of the word by different professional entities among its customers. The Panel looked through the enclosures provided by Respondent and determined that the term "Hi-fog" was written by using both upper and lower case, and in some cases reference could actually be construed as a reference to Complainant’s product. The Panel here in the "Jumbotron" case considered enclosures and publications submitted by Respondent as evidence of generic use of the term "jumbotron." The Panel noted that "jumbotron" was written with both upper and lower case and in various combinations of upper and lower case letters and found, as did the Panel in Marioff, that some of the references could actually be construed as a reference to the Sony "JumboTron" product. The Panel, in Marioff, considered the enclosures filed by Respondent and was of the opinion that those did not necessarily show that the term was used in a generic sense. Under those circumstances the Panel found that it must base its decision on the assumption that the Complainant enjoyed full and unlimited rights in the trademark Hi-fog. The Panel in the "Jumbotron" case finds that review of the same kinds of submissions by Respondent as were made by the Respondent in Marioff, produces the same type of comparisons and results in the same decision on the merits.

These cases are less compelling on their facts than the case here under review. Respondent has no rights or legitimate interests in the domain name JUMBOTRON.COM by reason of the generic nature of the word "jumbotron."

Respondent contends that before any notice of the dispute, it used the domain name with a bona fide offering of goods and services since it rents giant screen displays. See Policy ¶ 4(c)(i). But, Respondent was aware of Complainant’s mark before the domain name was registered. This provision of the Policy does not simply call for a legitimate business to be run to constitute a bona fide offering of goods and services. See Volkswagen of Amer., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000); Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000); Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000); Gorstew Ltd & Unique Vacations, Inc. v. Satin Leaf, Inc, FA 95414 (Nat. Arb. Forum Oct 4, 2000). In a case where the parties have co-operated in business in the past, and where Respondent acknowledges the registered trademark of Complainant on its web page, the use of a domain name identical to the mark of Complainant by Respondent is not in connection with a bona fide offering of goods or services. See Welltec ApS v. Gardner, supra.

Respondent further contends that it does not intend to divert consumers or to tarnish the trademark of Complainant. See Policy ¶ 4(c)(iii). But Respondent makes no representation that the domain name is being used "without intent for commercial gain."

Respondent contends that Complainant should be estopped from conducting this domain name dispute on account of the fact that Complainant has known about the use of the domain name for three years and has done nothing to stop the use. The evidence on this issue is in dispute. In the Affidavit of Huang, submitted for Respondent, he states that he corresponded with an agent of Complainant. But nothing in the correspondence even names the JUMBOTRON.COM web site. The only name mentioned was the name of Respondent. Nothing is proved by the correspondence. The Affidavit of Ted E. Dickson submitted by Respondent states that Dickson sent a memorandum to his superior at Sony in 1999 reporting that Respondent was using the JUMBOTRON.COM web site. The memorandum was not enclosed as an exhibit. Complainant submitted the Affidavit of Makoto Kogure. Kogure states that he is the Vice President of Complainant and that Complainant learned of Respondent’s use of the JUMMBOTRON.COM web site in late March 2000, and immediately began to make arrangements to investigate "possible action against the domain name." There is nothing in this disputed evidence that would justify finding estoppel against Complainant.

Based upon the considerable submissions, exhibits, arguments and citations of authority on this issue, the Panel finds that Respondent has no rights or legitimate interests in the domain name JUMBOTRON.COM.

Complainant contends that Respondent is intentionally attempting to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant’s "JumboTron" trademark as to the source, sponsorship, affiliation or endorsement of its web site, products and services. Respondent is aware of the worldwide fame of the "JumboTron" mark, since it deals in the rental of "JumboTron" screens and on account of constructive notice of the mark by virtue of registration on the United States Principal Register. Complainant contends that numerous generic terms are available to Respondent, such as large video screens, jumbo video screen and jumbo screens. The use of "JumboTron" serves no purpose other than to attract customers through confusion as to source. Complainant argues that a customer drawn to Respondent’s web site with an intention of buying or renting a Sony "JumboTron" display screen may end up with another product made by the competitors of Complainant. One reaching the JUMBOTRON.COM web site quickly learns that Respondent operates it. But, according to Complainant, initial interest confusion constitutes evidence of bad faith.

Respondent first contends that it did not act in bad faith since the domain name when registered and thereafter in use is a generic word. Respondent argues that there is no confusion between the domain name and Complainant’s mark because the domain name is a generic word. "JumboTron" has not been shown to be a generic word. The lack of bad faith cannot rest upon that argument.

Respondent contends that it did not register the domain name with intent to attract customers to its web site by creating a likelihood of confusion with Complainant’s mark. See Policy ¶ 4(b)(iv). There is no evidence presented by Complainant, Respondent argues, that proves any intent on Respondent’s part to divert customers. Respondent cannot divert customers, it says, because it rents giant video screens and Complainant does not. Complainant only sells giant screen displays. The evidence of lack of confusion advanced by Respondent is the Affidavit of Hwang who states that since he registered the domain name he is unaware of customer confusion. Respondent’s name is exhibited on each page of it web site, so there can be no confusion, Respondent claims.

The evidence is not in dispute as to what the registrant actually did. Hwang registered the domain name JUMBOTRON.COM with the full knowledge that Complainant manufactured and sold Sony JumboTron giant display screens. Hwang chose the domain name to attract customers with an interest in "jumbotron" giant display screens. He intended to trade on the fame and goodwill associated with the name "jumbotron."

On the facts of this case Hwang registered and Respondent uses the domain name with an intention to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site. That being established by the submissions in this case, the conduct shows evidence of registration and use in bad faith. See Policy ¶4(b)(iv).

Respondent contends that it cannot be found in bad faith in this proceeding since Hwang believed that "Jumbotron" was a generic word when he registered the domain name JUMBOTRON.COM. Respondent believes that the term is generic in its use of the domain name. If they believe that the term is generic, Respondent says, even though they are incorrect in that belief, Respondent has acted in good faith. No bad faith can be found under these circumstances, Respondent contends.

If such a proposition constitutes a valid defense in a domain name dispute case on the issue of bad faith, the cases of Welltec Aps v. Gardner, Marioff Corp. Oy v. Untra Fog AB, and Robus v. Suard, cited earlier in this Decision, would have been decided with opposite results as those reported. The Respondents in those cases contended strongly that it was the belief of the Respondent that the term was generic when registered and used. Those respondents did not prevail on the mistaken belief that a term was generic when it was not generic and was a registered mark of someone else.

In the Robus case the Panel considered Respondent’s insistence that she was acting in good faith with respect to the domain name. The Panel noted that Respondent denies "any intent to use disputed domain names for any unlawful purpose or for the purpose of being misleading or confusing to others" and a statement offered as being subject to perjury penalties provided to confirm that Ms. Suard believed she was acting in good faith. The Panel held that "…(T)he Policy is not intended to rest a determination …on the registrant’s beliefs with respect to what is proper conduct." Robus v. Suard, supra; see also Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000).

This Panel agrees with this reasoning. The mistaken belief that a term is generic is no defense to bad faith registration and use of a registered mark of another.

Respondent further argues that there is no evidence of confusion presented by Complainant in this case and unless Complainant offers evidence of actual confusion, Complainant must fail. The Panel notes that only in rare cases is evidence of actual confusion presented by Complainants. The lack of such evidence does not doom Complainant’s case.

Complainant contends that the facts of this case justify resort to the doctrine of initial interest confusion. Complainant cites Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d. 1036 (9^th Cir. 1999) for the proposition that even though Internet users accessing a domain name web site immediately realize that they have reached a site wholly unrelated to the registered mark holder whose name is identical or similar to the domain name used by another without permission of the holder of the mark, the domain name operator will still have gained a customer by appropriating the goodwill that the holder of the mark has developed.

The Panel agrees that initial interest confusion has occurred and will in the future occur regarding the domain name JUMBOTRON.COM.

The Panel finds from all of the evidence, submissions, argument and citation of authority in the record of this case that Respondent is using the domain name JUMBOTRON.COM to intentionally attempt to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with the mark "JumboTron" as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site.

The domain name JUMBOTRON.COM has been registered and is being use in bad faith.