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TeeVee Toons, Inc. v. Trans Vector Technologies, Inc. [2004] GENDND 1321 (26 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TeeVee Toons, Inc. v. Trans Vector Technologies, Inc.

Case No. D2004-0687

1. The Parties

The Complainant is TeeVee Toons, Inc., New York, New York, United States of America, represented by Jacqueline M. Sussman, Vice President Business & Legal Affairs.

The Respondent is Trans Vector Technologies, Inc., Camarillo, California, United States of America, represented by Oberdan Otto, President.

2. The Domain Name and Registrar

The disputed domain name <tvt.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2004. On August 31, 2004, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On September 2, 2004, Network Solutions, LLC, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 8, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 7, 2004. The Response was filed with the Center on October 5, 2004.

The Center appointed David H. Bernstein as the Sole Panelist in this matter on October 14, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

The following facts appear to be undisputed:

Since 1985, Complainant has been in the business of producing and selling musical sound and video recordings. Complainant filed its application to register "TVT Records" as a trademark on January 21, 1993; the mark was registered on September 28, 1993.

Respondent is a California corporation established in 1989 to provide software and services to manufacturers of semiconductors. On March 31, 1995, Respondent registered the disputed domain name, <tvt.com> ("the domain name") with Network Solutions, LLC. Respondent certifies that it had no knowledge of Complainant at the time Respondent registered the domain name. In August 2004, nearly a decade after Respondent registered the domain name, Complainant and Respondent engaged in exchanges concerning the possible sale of the domain name. Respondent offered to sell it for $50,000.

5. Parties' Contentions

A. Complainant

Because Complainant's contentions are so brief, they are reproduced below in their entirety (citations to annexes deleted):

"A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complaint is based on the TVT Records trademark.

The mark is used on musical sound recordings and musical video recording.

- The domain name is exactly identical to the trademark "TVT Records".

B. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

- The Respondent has no rights or legitimate interests in the <tvt.com> domain name as it is no longer conducting any business using the name "tvt" or any variation thereof.

C. The domain name is being used in bad faith. (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

- The Respondent is offering the <tvt.com> domain name for sale for $50,000."

WIPO notified Complainant that the Complaint was administratively deficient, partially because Complainant had failed to adequately describe the grounds for the Complaint. In response, Complainant filed an amendment reading, in its entirety, as follows (emphasis added):

"3(b)(ix)(2) The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this complaint because the Respondent does not do any business using the name "tvt". On the other hand TVT Records manufactures and distributes musical sound recordings and musical video recordings using the name "TVT". Attached as Annex 10 is a "screen shot" of the TVT Records website.

3(b)(ix)(3) While the Respondent did not initially register the domain name in bad faith, the Respondent knows that the Complainant uses "TVT" in its own domain name (<tvtrecords.com>) and on its goods offered for sale. When approached, the Respondent offered the domain name to Complainant for a fee of $50,000. This shows that Respondent is holding the domain name solely for the purposes of selling it."

B. Respondent

Respondent states that it registered the domain name <tvt.com> as an abbreviation of Trans Vector Technologies, both because other variants of the name were too long and because Respondent was commonly referred to as TVT within the semiconductor industry.

Respondent denies that the domain name is identical or confusingly similar to Complainant's registered trademark. Respondent argues that Complainant's registration protects only the "TVT Records" logo and does not give Complainant rights against other versions of the letters "TVT". Respondent cites the existence of a number of other entities allegedly doing business under the name "TVT". Respondent argues that its use of the domain name could not be confused with Complainant's mark because of the dissimilarity of Respondent's business. Respondent further claims that its website contains technical descriptions of Respondent's software, which could not be confused with Complainant's products.

Respondent claims that it uses the domain name to advertise, distribute and support its software. Respondent argues that this use, in conjunction with the fact that Respondent is commonly known as TVT in the semiconductor manufacturing industry, gives it a legitimate interest in the domain name. Respondent further contends that the fact that TVT is an abbreviation of its corporate name would alone be sufficient to establish its legitimate interest in the domain name.

Respondent argues that Complainant's concession that Respondent did not register the domain name in bad faith nullifies the complaint. Respondent asserts that it registered the domain name in good faith and has used the domain name in connection with its software business. Respondent claims that it did not become aware of Complainant until Complainant first complained to Respondent about alleged infringement of Complainant's trademark in December 1999. Respondent claims that it has recently considered selling the domain name, and that its asking price of $50,000 is less than the value of the domain name as estimated by unnamed domain name valuation services.

Finally, Respondent alleges that Complainant initiated this proceeding in order to halt Respondent's negotiations with other parties and to obtain the domain name without paying fair market value.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides 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.

Failure to prove any one of these elements is fatal to a Complaint.

In this case, although Complainant has demonstrated trademark rights in the initials TVT, Complainant concedes that it cannot prove an essential element of a UDRP complaint - bad faith registration. It is universally acknowledged by panelists that Paragraph 4(a)(iii) of the Policy requires Complainant to prove both that the domain name has been registered in bad faith and that it is being used in bad faith. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001 (January 14, 2000); Bandon Dunes L.P. v. DefaultData.com, WIPO Case No. D2000-0431 (July 13, 2000); e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369 (February 5, 2001). Not only is the Complaint devoid of any allegations of bad faith registration, but, in fact, the amendment admits that "Respondent did not initially register the domain name in bad faith".

The admission that Respondent did not register the domain name in bad faith renders irrelevant Complainant's allegations of bad faith use. Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI)'), WIPO Case No. D2001-0782 (August 14, 2001) ("if a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith"). In any event, offering to sell a domain name or other business asset in which a respondent has a legitimate interest cannot constitute bad faith use under the Policy. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). Because Respondent has certified that it is known in its field by its initials, TVT, Respondent has shown (though just barely, given the absence of any documentary support for this assertion) that it has a legitimate interest in the domain name under the Policy. Policy Paragraph 4(c)(ii).

7. Decision

The Panel finds that Complainant has failed to satisfy Paragraph 4(a)(iii) of the Policy. The Panel therefore denies the request to transfer the domain name to Complainant.

Dated: October 26, 2004