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Generic Top Level Domain Name (gTLD) Decisions |
Gemstar-TV Guide International, Inc. v.
Ross LeBel
Claim Number: FA0204000112583
Complainant
is Gemstar-TV Guide International, Inc.,
Pasadena, CA (“Complainant”) represented by David J. Steele, of Christie,
Parker & Hale LLP. Respondent
is Ross LeBel, Blaine, WA
(“Respondent”).
The
domain name at issue is <tvguide.biz>,
registered with Gal Communications Ltd.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on
May 1, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 June 7, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the
Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response
from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <tvguide.biz> domain
name is identical to Complainant’s TV GUIDE mark.
2. Respondent has no rights or legitimate
interests in the <tvguide.biz> domain name.
3. Respondent registered the <tvguide.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of numerous TV
GUIDE marks registered with the U.S. Patent and Trademark Office (“USPTO”),
specifically,
Reg. Nos. 2,554,596; 2,312,449 and 2,144,499, among others.
Complainant is a global diversified media and communications company
that has
utilized the TV GUIDE mark in the entertainment and publishing business for the
past fifty years. Complainant distributes
its products in the U.S. to over 100
million homes each week, and markets its products internationally to forty-five
countries. In
December of 1994, Complainant expanded its offerings by launching
a website available at <tvguide.com>.
Respondent registered the disputed domain
name on March 27, 2002 and has yet to develop a purpose or an attached website.
Respondent
is not a franchisee or a licensee of Complainant. Complainant’s
investigation has shown that Respondent is a habitual registrant
of domain
names incorporating famous marks.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate
pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights in the TV GUIDE mark through trademark
registration with the USPTO and continuous subsequent
international use.
Respondent’s <tvguide.biz> domain name is identical to
Complainant’s TV GUIDE mark in spelling and form, thereby satisfying the
identical inquiry. The addition
of gTLDs and the deletion of spaces are
inconsequential factors when conducting an identical inquiry under the STOP
Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible
in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make
all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademarks
in the U.S. and has made continuous use of its TV GUIDE
mark in international commerce. There is no evidence on the record, nor has
Respondent come forward to establish that it is commonly known by the <tvguide.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Furthermore, due to the international
fame and widespread use of Complainant’s TV GUIDE mark, it can be inferred that
Respondent is
not the owner of a trade or service mark that is identical to the
contested domain name. Therefore, Respondent has no rights or legitimate
interests in the <tvguide.biz> domain name under STOP Policy ¶
4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA
103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did
not come forward with a Response, the Panel could
infer that it had no
trademark or service marks identical to <grammy.biz> and therefore had no
rights or legitimate interests
in the domain name).
Respondent’s use of a domain name
identical to Complainant’s established mark implies that Respondent intends to
divert Internet users
interested in Complainant’s services or products to
Respondent’s website. Respondent’s registration of <tvguide.biz> is
not in connection with a bona fide offering of goods and services under STOP
Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co.
v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of
another's trademark to attract users to Respondent's domain is not considered
to be a bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii)”); see also Peachtree Software v. Scarponi, FA 102781
(Nat. Arb. Forum Jan. 23, 2002) (finding that Respondent’s intended use of the
<peachtree.biz> domain name to provide
information and services related
to Complainant’s PEACHTREE product, but without Complainant’s authorization,
would cause customer
confusion and is not a bona fide offering of goods or
services).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Complainant’s
mark represents an established American icon of the past fifty years.
Complainant’s achievements include developing
a corresponding website at an
identical domain name and international distribution sales to over forty-five
countries. Respondent’s
<tvguide.biz> domain name is identical to
Complainant’s established TV GUIDE mark resulting in the likelihood that
Internet users will believe that
there is some affiliation between Respondent
and Complainant; notwithstanding the fact that Respondent had no authorization
to make
use of Complainant’s mark. Registration and use of the <tvguide.biz>
domain name is evidence of bad faith pursuant to STOP Policy ¶4(b)(iv)
since it is inevitable that Respondent will attract unsuspecting
Internet users
seeking Complainant’s website based on the goodwill associated with its mark. See
Phat Fashions v. Kruger, FA 96193
(Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under [UDRP] Policy ¶
4(b)(iv) even though Respondent has not used the
domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use,
it will create the confusion described in the [UDRP]
Policy”); see also Red Bull GmbH
v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s
expected use of the domain name <redbull.org> would lead people
to
believe that the domain name was connected with Complainant, and thus is the
equivalent to bad faith use).
Additionally,
due to the aforementioned fame of Complainant’s mark, the nature of the STOP
proceedings and Respondent’s historical
tendencies to infringe on established
marks, Respondent was, at the very least, constructively aware of Complainant’s
TV GUIDE mark.
Respondent was aware that it was intentionally infringing upon
Complainant’s mark; thus, incorporating the identical mark into a
domain name
represents bad faith under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v.
Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly
known mark at the time of
registration); see also Ty Inc. v.
Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain
name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it); see also Gehl Co. v. Gehl, FA 102816
(Nat. Arb. Forum Jan. 30, 2002) (finding that the “long standing use and
historic nature” of the Complainant’s GEHL mark
put the Respondent on notice as
to the existence of the mark, thereby making Respondent aware that it was
infringing upon Complainant’s
rights)
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the Start-Up Trademark Opposition Policy, the Panel concludes
that relief shall
be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <tvguide.biz> be
TRANSFERRED from Respondent to Complainant and that subsequent
challenges under the STOP Policy against this domain name SHALL NOT be
permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 14, 2002
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