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Pfizer Inc v. Managed Networks [2005] GENDND 337 (6 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

COMSAT Corporation v. Ronald Isaacs

Case No. D2004-1082

1. The Parties

The Complainant is COMSAT Corporation, Maryland, United States of America, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Ronald Isaacs, Bonita Springs, Florida, United States of America, represented by Timothy J. Walton, United States of America.

2. The Domain Name and Registrar

The disputed domain name <comsatradio.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2004. On December 21, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On December 22, 2004, Register.com 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. The Center verified that 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 January 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2004. The Response was filed with the Center on January 24, 2005.

The Center appointed Sandra Franklin as the sole panelist in this matter on February 10, 2005. 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

Complainant was created by the United States Congress in the Communications Satellite Act of 1962. Since beginning operations in 1963 as the Communications Satellite Corporation, Complainant has been widely known as COMSAT. Complainant has 5 U.S. Trademark Registrations for COMSAT showing commercial use in various communications fields back to 1966. Complainant also owns the domain name <comsat.com>.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. Respondent’s <comsatradio.com> domain name is confusingly similar to Complainant’s COMSAT mark.

2. Respondent does not have any rights or legitimate interests in the <comsatradio.com> domain name.

3. Respondent registered and used the <comsatradio.com> domain name in bad faith.

B. Respondent makes the following assertions:

1. Complainant’s COMSAT mark is not identical or confusingly similar to Respondent’s <comsatradio.com> domain name.

2. Complainant’s rights are not exclusive, and Respondent could use the mark COMSAT legitimately. Others use similar names.

3. Respondent has not received any financial gain from using the <comsatradio.com> domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel finds that Complainant has established rights in the mark COMSAT through trademark registration and commercial use since at least 1966. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum September 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., WIPO Case No. D2001-0564 (June 18, 2001) finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark.

The mark COMSAT is a well-known mark throughout the world. In this case, the disputed domain name contains Complainant’s COMSAT mark in its entirety, along with the generic word “radio”. Consequently, the disputed domain name is confusingly similar to Complainant’s mark under Policy paragraph 4(a)(i). See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum November 14, 2002) finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000) finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) is satisfied; see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum September 14, 2000) finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy.

Once Complainant has shown a registered trademark, Respondent has the burden of refuting the assumption that Complainant has rights. See Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 (October 18, 2000) holding that ICANN Policy paragraph 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place; see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”). Respondent has failed to rebut the presumption that Complainant has rights in COMSAT and finds that COMSAT combined with a word which is a generic indicator of services in Complainant’s field and is confusingly similar to COMSAT.

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

B. Rights or Legitimate Interests

Complainant states and Respondent does not deny that the website associated with the <comsatradio.com> domain name is simply a holding page stating “coming soon”. Respondent has failed to establish any rights or legitimate interests in the <comsatradio.com> domain name. Respondent erroneously states that it could use the mark COMSAT legitimately, but does not even try to argue that it is currently doing so.

Instead Respondent cites other uses, such as for a font and for a rock band, as evidence that the mark can be used legitimately by other than Complainant. Such argument is irrelevant since the uses cited are not in the same class as Complainant’s services, and it does not pertain to Respondent’s use, among other things.

There is nothing in the record to indicate that Respondent is commonly known by the <comsatradio.com> domain name or is otherwise authorized to register domain names featuring Complainant’s COMSAT mark. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”.

Indeed, as Complainant and a previous Panel have pointed out, it would be extremely difficult for Respondent to show any legitimate interest in such an established mark as COMSAT. See COMSAT Corporation v Tele Satellite, WIPO Case No. DTV2001-0011, noting the “long-term use, fame and significance of the COMSAT marks” and stating that it is “essentially impossible to believe that, in the absence of specific, compelling evidence from Respondent, that it could be legitimately using the domain name”.

The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Complainant stated and Respondent did not deny that Respondent is using the <comsatradio.com> domain name to operate a website where pop-up advertisements can be accessed. Despite Respondent’s statement that he “denies that he realized any financial gain from the registration of the <comsatradio.com> domain name or any advertising that may have been placed at the address”, this Panel notes that, typically, the owner of a website posting pop-up ads receives click-through fees for diverting Internet users to the advertisers. Respondent’s opportunistic use of the domain name constitutes bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum September 15, 2000) finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain; see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum March 21, 2000) finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent.

The Panel finds that Respondent intended to trade off the value Complainant has built up in its mark COMSAT and knew that he would disrupt Complainant’s business by using its famous mark. See LACER, S.A. v. Constanti Gomez Marzo, WIPO Case No. D2001-0177 (“the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”.)

Furthermore, Respondent has not denied that he warehouses domain names, itself evidence of bad faith.

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

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <comsatradio.com> be transferred to the Complainant.

Sandra Franklin
Sole Panelist

Dated: February 18, 2005