DECISION

Raycom Media, Inc. v. Gawen Lawrence d/b/a Arrow Enterprises, Inc.

Claim Number: FA0302000147306

PARTIES

Complainant is Raycom Media, Inc., Montgomery, AL (“Complainant”) represented by John C. Alexander, Esq. of Raycom Media, Inc. Respondent is Gawen Lawrence d/b/a Arrow Enterprises, Inc., Kirksville, MO (“Respondent”) represented by Barry V. Cundiff, Esq. of Frick & Cundiff, PC.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ktvo.com> registered with Network Solutions, 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.

M. Kelly Tillery, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 28, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On March 4, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ktvo.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 2003 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@ktvo.com by e-mail.

A timely Response was received and determined to be complete on March 31, 2003.

A timely Additional Submission was received from Complainant on April 4, 2003.

On April 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esq. as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

Complainant contends that:

1. it is the owner of KTVO License Subsidiary, Inc., a corporation which is the owner of the “KTVO” service mark registered with the United States Patent and Trademark Office in International Class 38 for Television Broadcasting Services. (Registration #2,606,824; registered on August 13, 2002; first use in commerce:  November 21, 1955);

2. KTVO License Subsidiary, Inc. d/b/a KTVO-TV is a television station located in

Kirksville, Missouri;

3. it uses the mark KTVO on letterhead, business cards, television advertisements, advertising brochures, on its website www.raycommedia.com, and in other ways customary to the trade;

4. it has acquired common law rights in the mark “KTVO” as a result of continuous use of same for a period of 45 years;

5. the domain name <ktvo.com> is identical to the Federally Registered and

common law mark “KTVO” owned by KTVO License Subsidiary, Inc.;

6. the domain name <ktvo.com> is confusingly similar to the mark of Complainant;

7. Respondent has registered the domain name in order to prevent Complainant

from reflecting the mark in a corresponding domain name and has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or endorsement of Respondent’s website or location;

8. Respondent has no rights or legitimate interests in respect to the domain name as

there has been little or no activity on its website since 1999;

9. both Complainant and Respondent serve and are located substantially in the same

geographical market area, i.e., Kirksville, Missouri;

10. Respondent’s registration and use of the domain name deprives Complainant of

substantial revenues and consumer good will and impairs electronic commerce;

11. Respondent’s website shows only a page “under construction” named “Kirksville

Total Virtual Outlet” with a hyperlink to Arrow Enterprises which brings up an Arrow Enterprises Web Hosting and Design Advertisement;

12. the domain name <ktvo.com> is not the trade name or company name of Respondent and Respondent is not commonly known by that name and the name does not bear any legitimate relationship to the business of Respondent, which is selling real estate and designing and hosting websites;

13. Respondent is in fact known by the company name Arrow Enterprises, Inc.;

14. Respondent registered and is using the domain name <ktvo.com> in bad faith;

15. Respondent and Arrow Enterprises, Inc. are one and the same person or company;

16. Respondent owns an Assist 2 Sell franchise, a real estate company in Kirksville, Missouri;

17. Complainant contacted Respondent on several occasions to secure a

transfer of the domain name but was not successful;

18. On June 19, 2002, Complainant received an e-mail from “intruder”

<arrowed@swbell.net> over the signature of Galen Lawrence, the Respondent, offering to sell the domain name for $15,000.

B.  Respondent

Respondent contends that:

1. he decided in 1999 to attempt to create an online business called “KirksvilleTotal

Virtual Outlet” to sell products in the community by way of on-line advertising;

2. he registered the domain name on February 21, 1999 and soon thereafter began developing a web page and also began looking for businesses that might wish to sell products through that page;

3. sometime thereafter, Complainant contacted Respondent attempting to purchase the domain name;

4. he made contact with an on-line advertising broker that would give him access to a number of different companies who would be willing to advertise on the site;

5. he has delayed opening his website for fear that he would lose the

domain name and have to redevelop the site due to “repeated harassment” by Complainant in the form of threats, express or implied and that Respondent would face legal action if he did not concede to Complainant’s demand and turn over the domain name; 

6. work on the website is virtually complete but it has not been opened to the public; 

7. he offered to sell the domain name to Complainant for what he thought was a fair price;

8. Complainant’s mark was not registered until August 13, 2002 and not at the time the domain name was registered on February 21, 1999;

9. Television and radio station call letters assigned by the Federal Communications Commissions do not, in and of themselves, give rise to trademark rights and Complainant cannot claim to have trademark rights in “KTVO” at the time of Respondent’s registration of its domain name;

10. Respondent’s activities in developing its website show that it has a legitimate interest in the domain name;

11. Complainant presents no evidence to support its allegation that the domain name was registered in bad faith;

12. Complainant presents no evidence that would indicate that Respondent registered the domain name in order to prevent Complainant from having or for the purpose of disrupting Complainant’s business;

13. he is not a competitor of Complainant and intends to develop an entirely different business;

14. he offered to include a link on his page in order to avoid any confusion which might arise from the similarity of the domain name and Complainant’s call letters.

C. Additional Submissions

Complainant further contends that:

1. although Respondent claims that he has virtually completed an on-line store on

<ktvo.com>, he has offered no proof of same;

2. since 1999, Respondent has made no use of the website except for a hyperlink to

Arrow Enterprises, Inc.;

3. Respondent recently changed the website by deleting the hyperlink to Arrow

Enterprises, Inc.;

4. Complainant never threatened Respondent but simply made a reasonable offer to

resolve this matter in an attempt to avoid this proceeding.

FINDINGS

1.         Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.  Policy ¶ 4(a)(i).

2.         Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name. Policy ¶ 4(a)(ii).

3.         Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. Policy ¶ 4(a)(iii).

DISCUSSION

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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

There is no dispute, nor could there be, that Respondent’s domain name <ktvo.com> is identical to the call letters used by the TV station operated by KTVO License Subsidiary, Inc.  There is also no dispute that KTVO License Subsidiary, Inc. is the owner of a service mark “KTVO” registered on the Principal Register of the U.S. Patent and Trademark Office, Registration No. 2,606,824, on August 13, 2002 in International Class 38 for Television and Broadcasting Services.  That registration indicates that the first use of the mark by Registrant KTVO License Subsidiary, Inc., a Michigan Corporation, was on November 21, 1955, that the Application for Registration was filed on October 18, 2000 and that the Registration was issued on August 13, 2002.  Although the service mark was not registered until over three (3) years after the domain name registration, it is undisputed that the service mark had been in use continuously in connection with television broadcasting services for more than forty-three (43) years prior to the domain name registration.  Such lengthy and widespread use establishes strong and valuable common law trademark rights.  Under these circumstances, there is no doubt that KTVO License Subsidiary, Inc. has rights in a service mark and that Respondent’s domain name is identical to it.

However, that does not end the inquiry under ICANN Policy ¶ 4(a)(i).  Curiously, the Complainant is not KTVO License Subsidiary, Inc., but rather another corporation, Raycomm Media, Inc., which alleges that it is the “owner” of KTVO License Subsidiary, Inc.  While that could be a problem for Complainant Raycomm Media, Inc., ICANN Policy 4(a)(i) does not require that Complainant actually be the registered owner of a trademark or service mark but rather only requires that the Complainant “have rights” in and to a trademark or service mark which is identical or confusingly similar to Respondent’s domain name.  Raycomm Media, Inc. has sufficiently and clearly alleged that it is the owner of KTVO Subsidiary, Inc. which is in fact the owner of a Federally Registered service mark for “KTVO.”  Respondent has neither denied the truth of that well-plead allegation nor presented any evidence to the contrary.  Under those circumstances, this Panel finds that Complainant Raycomm Media, Inc., albeit not the actual owner of the Federally Registered service mark “KTVO,” does in fact have rights in and to that service mark as the parent/owner of the registered owner.  Under these circumstances, Respondent’s domain name is identical to a service mark in which a Complainant has rights.

Rights or Legitimate Interests

Respondent contends that he has rights or legitimate interests with respect to the domain name because he registered it on February 21, 1999, began developing a web page, and began looking for businesses that might wish to sell products through his web page.  In fact, Respondent contends that “work on the website is virtually complete” but that “it has not been opened to the public” because of “threats” of Complainant to take legal action, which, of course, Complainant has now done in this proceeding.  

Respondent thus claims the benefit of Policy ¶ 4(c)(i) that he has rights or legitimate interests with respect to the domain name because before he received notice of this dispute he made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.  Other than Respondent’s representations in his Response, the only evidence of record of any such “demonstrable preparations” are annexed to Complainant’s Complaint as Annex “C,” which appear to be photocopies of the home (only) page of the <ktvo.com> website, which simply indicates a site “coming soon” with a link to another site of Respondent for an unrelated business. 

Under these circumstances and given the fact that it is not disputed that the website has not been operated since the domain name registration in February of 1999 (over four (4) years), this Panel cannot find that there are sufficient demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services on the part of Respondent.  Thus, this Panel cannot find that Respondent has any rights or legitimate interests in respect of the domain name.  ICANN Policy ¶ 4(a)(ii). 

Registration and Use in Bad Faith

Although Respondent is correct that Complainant’s service mark was not registered in the United States Patent and Trademark Office until August 13, 2002, long after the February 1999 registration of the domain name in question, it is undisputed that Complainant’s mark has been in use on a local television station in the area in which Respondent does business since as early as November 21, 1955.  Under those circumstances, Respondent can hardly and does not deny that he was well aware of the existence of Complainant and Complainant’s widespread use of its mark in connection with television broadcasting services.  Under those circumstances, before Respondent registered the domain name, he was well aware of the substantial and widespread recognition accorded the call letters and mark of Complainant’s TV station.

Since the domain name links to a site of another business of Respondent, this Panel has no trouble finding that Respondent has intentionally attempted to attract for commercial gain, internet users to his website by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, or affiliation of his website or location of product or service of his website or location.  ICANN Policy ¶ 4(b)(iv). 

Further, Respondent does not dispute that he offered to sell the domain name to Complainant for $15,000, which would be far in excess of any reasonable documented out-of-pocket costs directly related to the domain name.  The Panel also finds that there are circumstances indicating that Respondent has registered the domain name primarily for the purpose of selling same to the Complainant, who is the owner of the service mark, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.  Policy ¶ 4(b)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (N.A.F., Apr. 30, 2001); World Wrestling Federation Entertainment, Inc. v. Bosman, D99-0001 (W.I.P.O. Jan. 14, 2000).

Thus, under all of these circumstances, the Panel finds that Respondent’s domain name has been registered and is being used in bad faith.  ICANN Policy ¶ 4(a)(iii).

DECISION

Having established all three (3) elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ktvo.com> domain name be TRANSFERRED from Respondent to Complainant.

M. Kelly Tillery, Esq., Panelist

Dated:  April 23, 2003

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