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International Capital & Management Company, LLP, Cancer Treatment Centers of America, Inc. v. Key of Destiny, Inc. [2005] GENDND 360 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul

Case No. D2004-0988

1. The Parties

The Complainant is CBS Broadcasting Inc., f/k/a CBS Inc, New York, New York, United States of America, represented by Naomi B. Waltman, United States of America.

The Respondent is Nabil Z. aghloul (also known as Nabil Zaghloul), Portland, Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cbscares.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2004. On November 25, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 29, 2004, eNom 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 November 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2004. The Response was filed with the Center on December 16, 2004.

The Center appointed William R. Towns as the Sole Panelist in this matter on December 23, 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.

Due to the sensitive nature of this dispute and the intervening year-end holidays, the date upon which the Panel’s decision was due was extended. Thereafter, the Panel determined that additional information was necessary to its deliberations, and an Administrative Panel Order was issued requesting further information. The parties have submitted such responses as they deem appropriate, and the Administrative Record is now closed.

4. Factual Background

The Complainant is a well known broadcasting company in the United States, which has used CBS as a mark in connection with its broadcasting services since 1933. The Complainant has obtained a number of registrations of the CBS mark with the United States Patent and Trademark Office respecting radio and television broadcasting services. The Complainant has used “CBS Cares” continuously in connection with a series of prominent public service announcements since 2000, and on August 20, 2004, applied for federal registration of “CBS Cares” in connection with promoting public awareness of important societal issues and for use with t-shirts.

On November 8, 2003, the Respondent registered the disputed domain name <cbscares.com>. The Complainant notified the Respondent of this dispute by letter dated June 22, 2004, demanding that the Respondent cease and desist his use of <cbscares.com>, and requesting transfer of the disputed domain name. The Respondent did not acknowledge his receipt of the Complainant’s notice letter until September 22, 2004, at which time the Respondent informed the Complainant that he had registered the disputed domain name for purposes of maintaining a “free speech” website with content critical of the Complainant.

At that time, the Respondent was not operating any such website, but he subsequently created the website, to which the disputed domain name resolves. The Respondent’s website consists of links to other web pages where content critical of the Complainant regarding various issues previously has been published. The front page of the Respondent’s website contains a disclaimer regarding any affiliation with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that for more than seventy-one (71) years it has used the CBS as a mark in interstate commerce. The Complainant is the owner of valid, subsisting and existing federal trademark registrations for the CBS mark. The Complainant asserts that the CBS mark is “a longstanding and world famous service mark”. See CBS Broadcasting, Inc. v. Rossi Hassad, WIPO Case No. D2000-1064. The Complainant has also used the CBS mark in connection with the marketing of a wide variety of merchandise, and operates websites under the domain names <cbs.com> and <cbsnews.com>.

The Complainant alleges that since the Fall of 2000, it has used “CBS Cares” as a common law mark in connection with a series of public service announcements. The Complainant has submitted documentary evidence of its use of “CBS Cares” in connection with this public service announcement program, as well as several hours of videotapes of such public service announcements. According to the Complainant, the “CBS Cares” public service announcements were created to promote public awareness of, and provide potentially life-saving information concerning important societal issues, and have been seen by millions of viewers, who have come to associate “CBS Cares” with services originating with or sponsored by the Complainant. The Complainant also has applied for federal registration of “CBS Cares” as a mark for use in connection with public service announcements and for use on t-shirts. The applications are pending in the United States Patent and Trademark Office.

The Complainant maintains that the disputed domain name is identical to the Complainant’s “CBS Cares” mark and confusingly similar to its world famous CBS mark. According to the Complainant, the Respondent lacks rights or legitimate interests in the domain name because the Respondent is not a licensee of the Complainant, has not been granted permission or consent to use the Complainant’s marks or any domain name incorporating those marks, is not commonly known by the disputed domain name, and has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Further, the Complainant maintains that the Respondent has no right or legitimate interest in using a domain name that incorporates the Complainant’s mark as the web address for his criticism site. The First Amendment of the United States Constitution protects the Respondent’s right to criticize the Complainant, but it does not entitle the Respondent to use the Complainant’s mark to lure the Complainant’s online audience to his criticism website.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent acted in bad faith when he intentionally chose a domain name that incorporated the Complainant’s mark in order to divert internet traffic intended for the Complainant’s website to his criticism website. The disclaimer on the Respondent’s website does nothing to dispel initial interest confusion. The Complainant further argues that bad faith can be inferred from the Respondent’s failure to begin operating his criticism website until after he received notice of the dispute, and the prior use of the domain name to direct consumers to a generic portal web page. Further, the Complainant urges bad faith is demonstrated by the Respondent’s provision of false contact information to the domain name registrar.

For the foregoing reasons the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent contends that he registered the disputed domain name with the sole intent of creating a website for content critical of the Complainant, and that he is in fact doing so. The Respondent maintains that his registration and use of the disputed domain name for this purpose is in good faith, and that he has a legitimate interest in using the domain name for this purpose. He asserts that he is not making and has never made any commercial use of the domain name, or offered the domain name for sale to anyone.

The Respondent states that the only reason he did not begin to operate the criticism website before receiving notice of the dispute from the Complainant was his lack of technical expertise regarding website development. He has submitted evidence that on one occasion in early 2004, he spoke by telephone with a website developer about creating a criticism site using the disputed domain name. He claims that the portal web page the domain name previously resolved to was the domain name registrar’s “default page”, and that he brought this to the Complainant’s attention after receiving notice of the dispute. The criticism website contains a disclaimer of any affiliation with the Complainant, and the Respondent asserts that he is not misleading the public regarding the Complainant’s affiliation, sponsorship or endorsement of his website.

The Respondent maintains that his use of a domain name incorporating the Complainant’s CBS mark is protected as free speech under the First Amendment of the United States Constitution, and does not constitute bad faith registration and use of the domain name under the Policy. The Respondent also asserts that the Complainant does not have trademark rights in “CBS Cares”, since the Complainant made no claim of prior use of “CBS Cares” as a mark in federal trademark applications the Complainant did not file until after the Respondent registered the disputed domain name for use in connection with a criticism website. Accordingly, the Respondent asserts that the Complainant is engaging in reverse domain name hijacking.

6. Discussion and Findings

A. Scope of Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, Paragraphs 169 & 170. Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Although the Complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a), a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <cbscares.com> is confusingly similar to the Complainant’s CBS mark, a well known mark in which the Complainant beyond question has established rights through registration and extensive use. The disputed domain name incorporates the Complainant’s CBS mark in its entirety, with the only difference being the addition of the word “cares”. The addition of this word does not materially distinguish the disputed domain name from the Complainant’s registered mark, particularly since the Complainant utilizes “CBS Cares” in connection with its public service announcements. Rather, the Panel believes that persons viewing the disputed domain name without awareness of its contents likely would think that the domain name is in some way connected to the Complainant. This is known as “initial interest confusion”, which occurs when a member of the public sees the disputed domain name and thinks that it may lead to a website associated with the Complainant. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. ¹

In addition, the Panel finds that the disputed domain name <cbscares.com> is identical to “CBS Cares”, which the Complainant claims to have used as a service mark since the Fall of 2000 in connection with a series of public service announcements broadcast over the Complainant’s television network. However, the Complainant did not seek to register “CBS Cares” as a service mark with the United States Patent and Trademark Office until August 20, 2004, some nine months after the Respondent registered the disputed domain name, and approximately one month after the Complainant’s cease and desist letter to the Respondent.

While the Complainant has not established trademark rights in “CBS Cares” based on registration, it is well settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. Accordingly, the Panel must consider whether the Complainant has established common law trademark rights in “CBS Cares” as alleged in the Complaint.

Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., [1918] USSC 182; 248 U.S. 90 (1918). The extensive or continuous use of a designation in advertising may establish its significance as an identifier of the user’s goods or services, particularly where the designation is not merely descriptive of the goods or services. See Restatement (Third) of Unfair Competition § 18 (1995). Ultimately, common law rights in a trademark depend on the actual use of the mark in commerce sufficient to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, [1996] USCAFED 239; 77 F.3d 1372 (Fed.Cir. 1996).

The Panel notes that the Complainant has submitted substantial documentary evidence supporting its claim of common law rights in “CBS Cares”. This evidence demonstrates that since the Fall of 2000 the Complainant has continuously used “CBS Cares” to identify a series of public service announcements broadcast over the Complainant’s television network. The “CBS Cares” public service announcements were created by the Complainant to promote public awareness of, and provide potentially life-saving information concerning important societal issues, and feature well known entertainment personalities. The evidence submitted by the Complainant leaves no doubt that such public service announcements have been broadcast on hundreds of occasions during the Complainant’s primetime network programming during the past four years. The public service announcements prominently feature the “CBS Cares” designation, and without question have been seen by millions of viewers.

It would certainly appear from the Complainant’s evidence that, given the Complainant’s extensive and continuous use of “CBS Cares” in connection with the public service announcement series described above, the viewing public came to associate these public service announcements with the Complainant long before the Respondent registered the disputed domain name on November 8, 2003. The Respondent points out, however, that when the Complainant filed its federal trademark applications respecting “CBS Cares” on August 20, 2004, the Complainant made no claim of prior use of “CBS Cares” as a mark. The Complainant has offered no explanation why it elected to file these trademark applications on an “intent to use” basis, but the Panel does not feel that any adverse inference that might be drawn from the nature of the Complainant’s trademark filings can overcome the substantial body of evidence submitted by the Complainant in this proceeding establishing its prior use of “CBS Cares” in connection with the series of public services announcements referred to above.

After careful consideration of the evidence of record, the Panel finds that the Complainant has established common law service mark rights in “CBS Cares” by virtue of its extensive and continuous use with respect to the series of public service announcements described above, notwithstanding the Complainant’s filing of “intent to use” service mark applications on August 20, 2004. The Complainant established common law rights in the “CBS Cares” mark long before the Respondent’s registration of the disputed domain name on November 8, 2003. Accordingly, the Panel finds for purposes of Paragraph 4(a)(i) that the disputed domain name is identical to the Complainant’s “CBS CARES” mark, and confusingly similar to the Complainant’s “CBS” mark.

C. Rights or Legitimate Interests

Under Paragraph 4(a)(ii), the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. However, the Respondent may establish rights to or legitimate interests in the disputed domain names under Paragraph 4(c) by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not licensed or otherwise consented to the Respondent’s use of its trademarks or service marks in connection with the disputed domain name, and the Respondent does not contend otherwise. The Respondent does not dispute the Complainant’s contention that he has not been commonly known by the disputed domain name, nor does the Respondent claim to have used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Accordingly, the Respondent’s claim of rights or legitimate interests in the disputed domain name depends on whether he is making a legitimate noncommercial or fair use of the domain name for purposes of Paragraph 4(c)(iii) of the Policy.

While the overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, Paragraph 4(c)(iii) aims at striking a balance between the rights of the trademark owner and those of the domain name registrant, where the use of the trademark in the domain name is not commercially motivated but is instead legitimately for purposes of criticism. Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. Read literally, Paragraph 4(c)(iii) would not prevent a respondent from making a legitimate noncommercial or fair use of a domain name that is identical or confusingly similar to a complainant’s mark, so long as it is not his intent to misleadingly divert consumers to his website for commercial gain or to tarnish the complainant’s mark. See id.

The Panel notes a line of criticism site cases based in the United States in which previous Panels have held that the Policy does not insulate trademark owners from critical views legitimately expressed without intent for commercial gain, even if posted at a “trademark.TLD” website. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190. This view is not representative of the consensus of opinion in criticism site cases outside the United States, which appears to be that a respondent has no right to use a domain name identical or confusingly similar to the complainant’s mark for purposes of criticism. See, e.g., The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823.

The apparent rationale behind these decisions is that the Policy does not countenance any type of initial interest confusion. Under this view, members of the public should not be confused for even a moment as to the source of the website to which the domain name at issue resolves. Thus, even where there is a clear disclaimer on the website that disabuses any notion that the site is endorsed by the complainant, the consensus view is still that a respondent cannot make a “legitimate noncommercial or fair use of a domain name” if any type of initial confusion is created. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. The Panel notes that the vast majority of criticism site cases decided to date under this “initial interest confusion approach” involve domain names that are identical to the trademark in issue.

One explanation offered for this divergence of opinion is that U.S. based Panelists are influenced by a “robust free speech tradition” derived from the First Amendment to the United States Constitution. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014. That is not to say that Panelists outside of the United States are any less concerned with the free speech rights of domain name registrants; they simply do not see the appropriation of another person’s trademark as protected speech. See, e.g., Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776. But First Amendment considerations have not prevented some U.S. based Panelists from ordering domain name transfers in criticism site cases where indicia of bad faith registration and use were present.² In addition, notwithstanding the “robust free speech tradition” of the United States, some U.S. based Panelists, applying the initial interest confusion approach, have concluded that a respondent cannot have a legitimate interest in using a domain name identical to the complainant’s mark, regardless of the content of the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778.

As the foregoing suggests, no true consensus has developed regarding whether, for purposes of Paragraph 4(c)(iii) of the Policy, a respondent can make a legitimate noncommercial or fair use of a domain name that is identical or confusingly similar to a complainant’s trademark. The prevalent view in criticism cases outside of the United States is that the Policy prohibits a respondent from choosing a domain name that creates initial interest confusion, even where there is a clear disclaimer on the website that disabuses any notion that the website is associated with the complainant. Yet Paragraph 4(c)(iii) does not expressly prohibit a respondent from using a domain name that is identical or confusingly similar to a complainant’s mark to divert consumers to his criticism site, when there is no intent for commercial gain to “misleadingly divert consumers” or to tarnish the mark at issue.

As used in the Policy, the concept of “misleadingly diverting consumers” refers to confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales.³ Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, WIPO Case No. D2001-0467. This concept obviously encompasses initial consumer confusion, since a diversion of sales may occur even though the consumer quickly realizes that the website to which he or she has been diverted is not affiliated with the trademark owner. See Dorr-Oliver, Inc. v. Fluid-Quip, Inc., [1996] USCA7 994; 94 F.3d 376, 382 (7^th Cir. 1996) (initial interest confusion affects the buying decisions of consumers in the market).

This Panel, after careful consideration of Paragraph 4(c)(iii), does not believe that the Policy intends to incorporate such trademark infringement concepts wholesale into the analysis of what constitutes a “legitimate” noncommercial or fair use under that paragraph. The Policy instead envisions a more holistic approach, which balances the interests of trademark owners against those of the public in the reasonably free use of domain names to effectively facilitate freedom of expression. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. Given the foregoing, this Panel is not prepared to embrace a bright line rule under Paragraph 4(c)(iii) that a respondent cannot make a legitimate noncommercial or fair use of a domain name which is identical or confusingly similar to a complainant’s mark, based solely on initial interest confusion, and without taking into consideration the overall circumstances surrounding the use of the domain name.

The Panel believes that the balancing approach envisioned by Paragraph 4(c)(iii) is best served by this approach. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. Because the Policy’s ultimate concern is the potential for false and misleading association, the actual circumstances surrounding the use of the domain name should be considered, including the manner in which visitors may potentially arrive at the respondent’s website. An internet user seeking a mark owner’s website typically will enter the mark followed by a common top level domain, or may conduct a similar search using a search engine, in either event calling up a list of sites identified by association with the mark. If the respondent’s website is not on that list, the potential for the public to be misled in the actual circumstances of the use of the domain name is limited. Id.⁴ And the presence of a website disclaimer or other distinguishing features of the site may serve to disabuse visitors of any belief that the site is affiliated with the complainant, or its content endorsed by the complainant. Id.

The Panel is not suggesting that the concept of the initial interest confusion has no place in the Paragraph 4(c)(iii) analysis, which as noted above, seeks to balance the bona fide rights of trademark owners with the public’s interest in the use of domain names to facilitate freedom of expression. There is clearly some merit to the reasoning of prior Panels holding that use of a domain name which is identical to a complainant’s mark should not qualify as a “legitimate noncommercial or fair use” under Paragraph 4(c)(iii), given the immediate potential for false association with the trademark owner and the high degree of initial confusion created. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778. The articulated rationale in many of these decisions – the furtherance of the Policy’s aim of preventing cybersquatting, minimizing confusion with established trademarks, and helping to assure the rights of bona fide trademark owners’ rights – is certainly one with which this Panel agrees.

In this Panel’s view, however, the conclusion that no legitimate noncommercial use can ever be made of a domain name which is identical to the complainant’s mark is not consistent with the balancing test envisioned by Paragraph 4(c)(iii), at least not when there otherwise is no evidence of cybersquatting or bad faith. Clearly, a respondent has no right to use the complainant’s mark or a corresponding domain name so as to trick the public into believing that the complainant endorses any of the critical views expressed on the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175 (bad faith found where be created if the respondent’s criticism site created “look and feel” of the complainant’s official website). And a respondent cannot make a legitimate noncommercial or fair use of a domain name within the meaning of Paragraph 4(c)(iii) if such use is merely a pretext to cybersquatting, or if bad faith registration and use of the domain name otherwise is indicated from the circumstances of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

In several of the decisions referred to above involving domain names that were identical to the complainant’s mark, other indicia of cybersquatting or bad faith were present. For example, the respondent in Justice for Children copied the “look and feel” of the complainant’s website, while making no attempt to disclaim any affiliation. In New York Times Co. v. New York Internet Services, WIPO Case No. D2000-1072, the Panel noted in the record substantial evidence of actual public confusion as to the complainant’s affiliation with the respondent’s website. In addition, the Panel found that the respondent was making a commercial use of the disputed domain name. See also Council of American Survey Research Organizations (CASRO) v. Consumer Information Organization LLC aka Pinelands Web Services, WIPO Case No. D2002-0377 (criticism site used to market products, respondent owned over 1200 domain names, and many of respondent’s domain names incorporated famous marks); Estée Lauder, Inc. v. Estelauder.com, Estelauder.net, and Jeff Hanna, WIPO Case No. D2000-0869 (domains of complaint sites suggested typosquatting, there was evidence of actual confusion, and respondent reserved other domain names incorporating famous marks); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (respondent’s noncommercial use of domain name pre-textual where respondent made “overtures to be bought off” in order to transfer domain name).

The Panel will now apply the foregoing principles to the circumstances of this case, in an effort to determine whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the meaning of Paragraph 4(c)(iii) of the Policy. The Respondent registered a domain name identical to the Complainant’s “CBS CARES” mark, which creates an immediate potential for false association with the Complainant and a high degree of initial confusion. In the Panel’s view, the circumstances of this case strongly suggest that the Respondent’s did so intentionally. And while the Respondent’s website appears to be in the nature of a criticism site, and disclaims any affiliation with the Complainant, there are other indicia of cybersquatting and bad faith in the record.

The Respondent’s passive holding of the domain name for nearly a year following its registration is problematic. Under certain circumstances, a respondent’s passive holding of a domain name can be indicative of bad faith. The leading decision in this area is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Several of the circumstances that supported a conclusion of bad faith in Telstra are present in this case, including the fact that the Complainant’s marks have a strong reputation and are well known. In addition, the Telstra Panel found relevant the fact that the respondent had provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Similarly, the Panel in Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668, inferred cybersquatting from the respondent’s failure to actively use or make preparations to use the disputed domain name for noncommercial purposes until he was notified by the complainant of the dispute.

After careful consideration, the Panel finds the totality of the circumstances in this case to be indicative of cybersquatting and bad faith. The Respondent registered a domain name identical to the Complainant’s “CBS CARES” mark, in which the Complainant previously had established rights. The Respondent did not launch his criticism website until almost a year after he registered the disputed domain name, and then only after receiving a cease and desist letter from the Complainant. There is no credible evidence in the record that the Respondent had ever formed the intent to use the disputed domain name in connection with a criticism site until several months after the Complainant issued its cease and desist letter. In fact, the Panel has serious reservations whether the Respondent’s subsequent creation of the website was motivated by anything other than a desire to frustrate the Complainant’s efforts to obtain the transfer of a domain name.

The Respondent has submitted no evidence of his demonstrable preparations to use the domain name for a criticism website prior to his receipt of the Complainant’s cease and desist letter. The Respondent now claims that he consulted with a website developer in early 2004, but even so, the evidence presented by the Respondent indicates that this contact was limited to one telephone conference, to which there was no follow up. The Panel does not consider this to be credible evidence of any demonstrable preparations on the part of the Respondent, before receiving notice of this dispute, to use the disputed domain name in connection with a legitimate criticism website. Since the Respondent contacted a website developer, with whom by all appearances he already was well acquainted, it strains credulity for the Respondent to claim that the only reason he did not post his criticism website before receiving notice of this dispute was his lack of website development skills. In that regard, the Panel also notes that when the Respondent replied to the Complainant’s cease and desist letter on September 22, 2004, he conveyed the impression that he could easily have created the website at any time he chose.⁵

The Panel concludes from the totality of these circumstances that the Respondent’s claim to have registered the disputed domain name solely for purposes of criticizing the Complainant is pretextual, and that his registration and passive holding of a domain name which is identical to the Complainant’s “CBS CARES” mark constitutes cybersquatting. There is no credible evidence from which the Panel can conclude that the Respondent created the criticism website in question for any purpose other than to resist the Complainant’s efforts to obtain the transfer of the disputed domain name. For these reasons, the Panel concludes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of Paragraph 4(c)(iii). Accordingly, the Complainant has discharged its burden under Paragraph 4(a)(ii) to establish that the Respondent lacks rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The Panel notes that the examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. Under the Telstra analysis, as discussed above, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668. For the reasons discussed above, this Panel cannot, in the circumstances of this case, conceive of any plausible actual or contemplated actual use of the disputed domain name by the Respondent that would be legitimate. The Panel also notes that Respondent was clearly aware of CBS’ marks at the time he registered the disputed domain name. Accordingly, the Panel finds that the Complainant has met its burden under Paragraph 4(a)(iii) to demonstrate bad faith registration and use of the disputed domain name.

E. Reverse Domain Name Hijacking

The Respondent has alleged that the Complainant is attempting reverse domain name hijacking. The gist of the Respondent’s argument is that the Complainant did not have trademark rights in “CBS Cares” prior to the Respondent’s registration of the disputed domain name, and that the Complainant brought this proceeding in bad faith in order to abridge the Respondent’s right of free speech. This argument ignores the fact that, when the Complainant initially requested the transfer of the domain name, the Respondent was not making any active use of the domain name, and had never used the domain name in connection with a criticism website. Further, the Complainant established common law rights in the “CBS CARES” mark long before the Respondent’s registration of the disputed domain name. The Respondent’s claim of reverse domain name hijacking therefore is rejected by the Panel.

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 <cbscares.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: February 5, 2005

² See, e.g., Council of American Survey Research Organizations (CASRO) v. Consumer Information Organization LLC aka Pinelands Web Services, WIPO Case No. D2002-0377 (criticism site used to market products, respondent owned over 1200 domain names, and many of respondent's domain names incorporated famous marks); New York Times Co. v. New York Internet Services, WIPO Case No. D2000-1072 (respondent received financial benefit from advertising on commentary site); Estée Lauder, Inc. v. Estelauder.com, Estelauder.net, and Jeff Hanna, WIPO Case No. D2000-0869 (domains of complaint sites suggested typosquatting, there was evidence of actual confusion, and respondent reserved other domain names incorporating famous marks); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (respondent's noncommercial use of domain name pre-textual where respondent made “overtures to be bought off” in order to transfer domain name).

³ A “competitor” is a person or entity in competition with the complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder. Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, WIPO Case No. D2001-0467.

⁴ See also Justice for Children v. R neetso / Robert W. O'Steen, WIPO Case No. D2004-0175 (initial interest confusion arises when user seeks mark owner’s site by entering mark followed by common top level domain, by critic’s use of metadata that include the mark, or because a search engine identifies the critic’s website by performing a similar search electronically).

⁵ The Respondent advised the Complainant cease in his September 22, 2004 letter that he would delay launching the website for a week to allow the Complainant to substantiate his claim that he had no control over the domain name registrar’s prior use of the domain name in connection with a portal site. The clear implication from this is that the Respondent, had he cared to, could have developed the criticism website at any time.