National Cable Satellite Corporation v. Black Sun Surf Co.
[Indexed as: National Cable Satellite Corporation v. Black Sun Surf]
[Indexed as CSPAN.NET]
National Arbitration Forum
Case No. FA0003000094738
Commenced: 8 May 2000
Judgment: 19 June 2000
Arbitrator: James Alan Crary
Domain Name - Domain Name Dispute Resolution Policy - Registered Trademark - Confusingly Similar - Misleading Diversion of Users - Consumer Familiarity - Commercial Gain - Reputation - Goodwill - Bad faith registration - Bad faith use.
Complainant, a non-profit educational organization, owns and operates C-SPAN, a nationally-known producer of public affairs television programming, and is the owner of, inter alia, the registered trademark "C-SPAN". Complainant registered the domain name CSPAN.ORG in October 1993. In December 1998, Respondent registered the name CSPAN.NET, which directed internet users to a pornographic site called FINECHICKS.COM. Upon learning of this, Complainant wrote to Respondent and demanded transfer of the domain name. Respondent refused, instead changing the website at CSPAN.NET to a site under construction entitled "Computer Science Papers And Notes". Eventually, Respondent offered to sell the domain name in dispute to Complainant.
Complainant alleged that Respondent had no legitimate interest in the domain name CSPAN.NET and registered and used it in bad faith, hoping to benefit from consumer familiarity with Complainant's trademark. In fact, there were complaints from internet users who reached the pornographic site when looking for Complainant's site.
Held, Name Transferred to Complainant.
The domain name as registered by Respondent is confusingly similar to Complainant's well-known registered trademark, the only difference being the exclusion of a hyphen. Respondent intentionally, and for commercial gain, intended to attract to its adult sites internet users seeking products or services associated with Complainant's trademark. In doing so, Respondent tarnished Complainant's trademark. "Computer Science Papers And Notes" was an invention for the purposes of defeating a transfer of the disputed domain name. Thus, Respondent had no rights or legitimate interests in CSPAN.NET and registered and used the domain name in bad faith.
Policies referred to:
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Crary, Arbitrator: -
This is a domain name dispute. Administrative proceedings were conducted pursuant to the ICANN Uniform Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James A. Crary was selected to serve as the sole administrative panelist.
Domain Names: CSPAN.NET
Date of Domain Name Registrar: Network Solutions, Inc.
Date of Domain Name Registration: December 16, 1998
Date Administrative Proceeding Commenced: May 8, 2000
Date Response Due: May 30, 2000 (No Response Filed)
Relief Requested by Complainant: Transfer of CSPAN.NET to the Complainant.
National Cable Satellite Corporation, the Complainant herein, owns and operates C-SPAN, a nationally known producer of public affairs television programming distributed by cable and satellite. "C-SPAN" is an acronym for "Cable Satellite Public Affairs Network" and as a non-profit educational organization.
The Complainant has used the trademark C-SPAN since March 1979. It received United States Patent and Trademark Office registrations for the trademarks, "C-SPAN AMERICA'S NETWORK" on July 15, 1986 and "C-SPAN" on July 22, 1997. It also owns other registered trademarks, which utilize "C-SPAN" in other forms.
The Complainant registered the domain name CSPAN.ORG in October 1993.
The Respondent registered the name CSPAN.NET in December of 1998. The domain name (spelling) omitted the hyphen.
On April 12, 2000, the Complainant learned that internet users who entered CSPAN.NET would be directed to a web page entitled, FINECHICKS.COM. From there the internet user was led to various sites, which contained adult content, ("various pornographic sites"). It was maintained that the internet user was trapped since when the attempt was made to exit the site, the user was lead to another adult site.
On April 17, 2000, Complainant through its counsel corresponded with Respondent, maintaining that there was infringement on its mark by the use of the domain name. Transfer of the domain name was demanded.
Shortly afterwards, Respondent changed the destination from FINECHICKS web page to a site entitled, "Computer Science Papers And Notes." The site was said to be under construction. The trapping feature that prevented internet users from exiting had been removed.
The Complainant maintains that Respondent owns other domain names, all of which route internet users to the FINECHICKS web page and to adult sites linked to it in a similar manner as the CSPAN.NET domain name had been used prior to Complainant's letter of April 17, 2000.
Respondent posted a reply to Complainant's letter of April 17, 2000 on its site. Transfer of the domain name was refused. Complainant was described as trying to intimidate and scare Respondent. Finally Respondent offered to negotiate the transfer "They may contact me privately for a quotation for ownership of CSPAN.NET."
The Complainant maintained Respondent had no legitimate interest in the domain name CSPAN.NET. Respondent's use had caused and would cause confusion among internet users. The domain name was registered long after Complainant had established a well-known trade name for public affairs television programming via cable and satellite. There had been complaints from internet users that they reached the adult site when looking for Complainant's site. This was because of the virtually identical domain name used by Respondent. The altered site currently used by Respondent suggested Respondent had a plan to use the disputed domain name for commercial purposes. Internet users would be confused since they might believe the site was connected to the Complainant.
Bad faith was alleged. Respondent had chosen its well-known trademark hoping to benefit from consumer familiarity with the Complainants trademark and the goodwill associated with it. The disputed domain name was used to attract internet users to its adult website.
Respondent was offering to sell the disputed domain name back to the owner of the legitimate trademark. Transfer of the domain name CSPAN.NET was demanded in the complaint.
The Panel was satisfied that the Forum took all steps necessary to notify Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Forum. The Complainant was served by mail, e-mail, and fax on the party designated as administrative contact for the Respondent. It was concluded Respondent had notice of the complaint and the commencement of proceedings.
According to the Policy section 4(a), to be entitled to cancellation or transfer of a domain name, the Complainant must prove the disputed domain name:
(1) Is identical or confusingly similar 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 and is being used in bad faith.
In those cases where there is no response filed to the complaint, the Rules at 5(e) and 14(a) provide that the Panel may proceed to decision based on the complaint, except in cases where there are exceptional circumstances.
Rule 14(b), provides that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. There were no exceptional circumstances, which are known to exist in this case, and therefore, the Panel proceeded to decision based upon the complaint.
Based on the complaint and supporting documents the Panel concluded that the domain name CSPAN.NET is confusingly similar to Complainant's trademark C-SPAN in which the Complainant has rights. The Respondent's domain name simply omits the "hyphen" in the spelling.
C-SPAN has become a well-known if not famous trademark associated with public affairs broadcasting over cable and satellite. The domain name CSPAN.NET is used by Respondent to route internet users to an adult oriented site. [Policy 4(a)(i)]. The domain name CSPAN.NET which omitted the hyphen from the trademark spelling is confusingly similar to Complainant's mark. [Policy 4(a)(i)]
The circumstances outlined in the Policy at 4(c) did not appear to be present. Respondent's use of the dispute domain name, although it may have been before notice of a dispute, could not be said to be a bona fide offering of goods or services. Respondent used the confusingly similar domain name as a magnet to attract internet users familiar with Complainant's well-known trademark to adult sites which were totally unrelated to the domain name. Respondent was not known by the domain name; rather it did business as Black Sun Surf Co. There was no evidence of a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. Respondent's use had the opposite effect. In addition, it tarnished the trademark at issue. It was concluded Respondent had no rights or legitimate interests in respect to CSPAN.NET [Policy 4(a)(ii)].
The Policy at 4(b) sets forth various particular circumstances "without limitation" which if found by the Panel shall be deemed evidence of bad faith registration and use.
Complainant's initial letter demanding transfer of the domain name was met with a reply posted on Respondent's website. Unfavorable inferences were drawn with regard to the assertion contained in the reply that "C-SPAN" stood for an acronym "Computer Science Papers And Notes". Other than the bare inference that somehow Respondent intends a commercial venture in the future, there was no supporting evidence. "Computer Science Papers And Notes" was concluded to be an invention for the purposes of defeating a transfer of the disputed domain name. Respondent did not answer the Complaint. The reply posted on the website was in reply to Complainants demand letter. The assertions contained in the reply were given very little weight since they were not supported by the record as a whole.
The posting on the internet also contains Respondent's offer to negotiate the sale and transfer of the disputed domain name CSPAN.NET. Respondent delineates the various items to be negotiated including time spent in developing site content, research, attorneys fees, the appraised value of the domain name as well as the cost of registering a new domain name.
It also appeared from the complaint and supporting documents that Respondent intentionally intended to attract for commercial gain, internet users seeking products or services associated with Complainant's name and trademark. The confusingly similar domain name created the likelihood of confusion with Complainant's mark as to the source and location of the product or services on Respondent's website. [Policy 4(b)(iv)].
The Panel concluded that the evidence in this case supported a finding of bad faith registration and use under 4(b) of the Policy.
Based on the above findings and conclusions, and pursuant to Rule 4(i), it was ordered as follows:
That the domain name CSPAN.NET be transferred to the Complainant.
Dated: June 19, 2000
Honorable James Alan Crary, Presiding Panelist
Domain Name Transferred