DECISION

National Cable Satellite Corporation d/b/a C-Span v. Charles J. Span

Claim Number: FA0205000114383

PARTIES

Complainant is National Cable Satellite Corporation d/b/a C-Span, Washington, DC, USA (“Complainant”) represented by Marc Miller, of McLeod, Watkinson & Miller.  Respondent is Charles J. Span, London, UNITED KINGDOM (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <c-span.com> and <cspan.com>, registered with Bulkregister.com, Inc.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 22, 2002; the Forum received a hard copy of the Complaint on .

On May 22, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain names <c-span.com> and <cspan.com> are registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the names.  Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. 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 May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2002 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@c-span.com and postmaster@cspan.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <c-span.com> and <cspan.com> domain names are respectively identical and confusingly similar to Complainant’s C-SPAN mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent has failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a registered trademark on the Principal Register of United States Patent and Trademark Office for C-SPAN (Reg. No. 114383).  Complainant has used the C-SPAN mark since 1979.  The C-SPAN mark is recognized worldwide and is associated with balanced, impartial and non-partisan coverage of the United States Congress, events related to governmental and public affairs, and other programming. 

Respondent registered the disputed domain names on August 10, 2002.  Respondent has yet to develop a use for the domain names.  Complainant sent a letter to Respondent, which notified Respondent of its rights in the C-SPAN mark and demanded that Respondent transfer the disputed domain names to Complainant.

Complainant was unable to locate Respondent and believes that Respondent provided a false contact name, “Charles J. Span,” when registering the disputed domain names.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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 has established its rights to the C-SPAN mark through registration with the United States Patent and Trademark Office and subsequent continuous use. 

Respondent’s <c-span.com> domain name contains Complainant’s C-SPAN mark in its entirety.  The addition of the generic top-level domain “.com” is inconsequential when conducting an “identical” analysis under Policy ¶ 4(a)(i).  Therefore, Respondent’s <c-span.com> domain name is identical to Complainant’s mark.  See Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the generic top level domain, such as “.net” or “.com,” does not affect the domain name for the purpose of determining whether it is identical).

Respondent’s <cspan.com> domain name is confusingly similar to Complainant’s C-SPAN mark because the omission of a hyphen from a mark is irrelevant when conducting a “confusingly similar” analysis.  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain names and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain names.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).  Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Complainant’s investigation revealed that Respondent has not put the disputed domain names to use during nearly two years of ownership.  Also, Respondent has not come forward to offer any evidence that it has actively used the disputed domain names.  Therefore, Respondent’s passive holding of the disputed domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Complainant’s investigation failed to uncover any person in the United Kingdom named Charles J. Span, which is the name Respondent registered the disputed domain names under.  Complainant contends that Charles J. Span is a false name and that Respondent is not commonly known as C-SPAN, CSPAN, <c-span.com>, or <cspan.com>.  Respondent offers no evidence to the contrary.  Therefore, Respondent has not met the burden of Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s passive holding of the disputed domain names for two years amounts to bad faith use under Policy ¶ 4(a)(iii).  See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Due to the fame and notoriety of Complainant’s C-SPAN mark, Respondent had constructive notice of Complainant’s rights in the mark.  Such knowledge and subsequent registration of an identical and confusingly similar mark represents bad faith registration under Policy ¶ 4(a)(iii).  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <c-span.com> and <cspan.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: July 17, 2002

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