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NATIONAL ARBITRATION FORUM DECISION TVN Entertainment Corporation v. Sameul Rodrigo
PARTIES
REGISTRAR AND DISPUTED DOMAIN NAMES
PANEL
Diane Cabell and Louis E. Condon as Panelists and Bruce E. O'Connor as Chair. PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2010. On March 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tvnsports.com> and <tvnsport.com> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tvnsports.com and postmaster@tvnsport.com. Also on March 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. A timely Response including the Annexes was received by the Forum on March 29, 2010. Because the Annexes were not separate from the Response, the Forum deemed the Annexes not to be in compliance with Supplemental Rule 5(c)(i). On April 5, 2010, a timely Additional Submission was received by the
Forum from Complainant.
On April 11, 2010, a timely Additional Submission was received by the Forum from Respondent. RELIEF SOUGHT
PARTIES' CONTENTIONS
Trademark Rights
TVN, Registration No. 3,377,255, registered February 5, 2008, on an application filed on January 17, 2007, and claiming first use on January 5, 1990, and registered for: Broadcasting services, and provision of telecommunications access to movies, events, television programs and other video and audio content provided via a video-on-demand service; video on demand transmission services; satellite and television transmission services; pay-per-view television transmission services; cable television programming; distribution of video on demand television programming to cable and satellite television systems; distribution of television programming to cable televisions systems. Since 1999, Complainant has continuously and exclusively used the TVN Mark in the United States and in many countries around the world, long before Respondent unlawfully registered the contested domain names. As a result of over a decade of use, Complainant has created in the TVN Mark one of the most famous and distinctive marks in the digital media industry. The TVN Mark has acquired a valuable goodwill and reputation, not only in the United States but throughout the world. Complainant's business possesses an extensive content library, including transport rights from the top national programmers, including ABC-Disney, Turner, NBC Universal, MTV Networks, Fox Cable Networks as well as On Demand content from every major studio such as Buena Vista/Disney, DreamWorks, Lionsgate NBC Universal, Paramount, Sony, 20th Century Fox, and Warner Bros and television network, as well as content only available On Demand. As such, the Complainant's customers have developed an expectation of high quality, lawfully distributed digital content. Confusingly similar
Bad faith
Because Complainant is in the business of digital distribution of television content, it is highly likely that Respondent's use creates a likelihood of confusion with Complainant and Complainant's mark. Internet users who visit the contested domain names are likely to conclude that the domain names are associated with Complainant and its distribution of high-quality digital media content. In the present case, Respondent registered the domain names <tvnsport.com> and <tvnsports.com>, which are confusingly similar to Complainant's TVN Mark. Because the TVN Mark is so obviously connected with Complainant, and because the contested domain names so clearly reference Complainant's mark, registration by Respondent, who has no connection to Complainant, suggests bad faith. Legitimate rights and interests
Respondent is knowingly infringing the TVN Mark, so this use cannot be a bona fide offering of goods and services under the Policy. Respondent is not making a "legitimate noncommercial or fair use of the domain name, without intent for commercial gain." As Respondent's website shows, Respondent is using the contested domain names for its own commercial benefit. This use establishes Respondent's "intent for commercial gain" and undermines any claim that the use was "noncommercial." In view of Complainant's distinctive marks, this commercial use by Respondent violates Complainant's rights under Section 43(a) of the Lanham Act. Respondent's use of the subject name is "on or in connection with any goods or services," and Respondent "uses in commerce any word, term, [or] name..., or any combination thereof..., which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Accordingly, under the laws of the United States and the decisions of prior administrative proceedings, Respondent cannot show any rights to or legitimate interests in the contested domain names. B. Respondent About Complainant
There is no evidence whatsoever that Complainant enjoys any degree of name recognition in the public at large in the United States, or anywhere else in the world. This is implicitly confirmed by the admission in the Complaint itself that Complainant's mark is well known "in the digital media industry". Complainant does not even allege that it is well known or known at all, to the general public in the United States or anywhere else in the world. Respondent refers to numerous companies in the United States and elsewhere that use TVN as their business name. Perhaps the ubiquitous use of "TVN" all over the world, particularly
with television and broadcasting related enterprises, has to do with the
fact that it contains the most common
What is surprising however is that Complainant indulgently thinks that it has a world-wide monopoly on the name, "TVN". This becomes even more of a surprise when Complainant does not even call itself "TVN". Complainant does not explain in its Complaint, why it actually identifies itself as "Avail-TVN", rather than "TVN" given its allegation of trademark rights and industry reputation. In fact, nowhere on its web site is "TVN" used by itself, except in its domain name. This can readily be seen by briefly reviewing Complainant's own web site. Accordingly, it is clear that Complainant currently identifies itself as "Avail- TVN", rather than as "TVN". Complainant failed to mention, anywhere in its Complaint, that Respondent registered the disputed domain names before Complainant obtained any registered trademark rights. In fact, Respondent registered the disputed domain names on January 8, 2008. Complainant only received its U.S. trademark registration from the USPTO, on February 5, 2008. Accordingly, at the time of Respondent's registration of the disputed domain names, Complainant had no registered trademark rights and there is no evidence that Complainant had any registered trademark rights in any other country. Furthermore, although Complainant baldly asserts that it has common law trademark rights, it has failed to include a scintilla of evidence supporting when or where it acquired such common rights, notwithstanding that Complainant had every opportunity to do so. Even if Complainant had demonstrated common law trademark rights for
TVN, which it did not, surely such common law rights would be limited in
geographical scope.
About Respondent
Respondent is a young entrepreneur and cricket fan who established a successful web site business in January of 2008. He originally chose the disputed domain names only because they conveyed a "television" and "network" service of sorts, and also because the domains described the service of TV and (or "N") sports. The singular version was registered to protect his primary domain name, the plural version. He most certainly did not register the disputed domain names because of Complainant, who enjoys absolutely no reputation amongst the consumer public anywhere in the world. There was absolutely no intention to "target" Complainant in any manner. There was absolutely no intention to interfere with Complainant's business or to capitalize on Complainant's reputation, of which there is and was none in the Netherlands or anywhere else outside of the US broadcasting industry. Accordingly, Respondent's registration of the disputed domain names was a product of considerations wholly unrelated to Complainant. A search of the Wayback Machine Internet Archive (the "archive") reveals that the original registrant of the domain name, TVNSPORTS.COM, originally registered the domain name back in 2001. According to the archived web site, the original registrant, TVN Sports, was an American company that had been in video and television business since 1983. According to the archive, the domain name was not associated with an active web site between 2002 and 2008, and was likely not even registered as a domain name for six years. It was at this time, on January 8, 2008, that Respondent registered both of the disputed domain names, through a domain name registrar, Enom. As with all major domain name registration companies, Enom offers all of its customers a check box where they can select to have their privacy maintained so that their registration details are not made public. Without much thought other than to take advantage of this free and possibly beneficial service, like millions of other law abiding people, Respondent checked the box. There was of course, not even the slightest contemplation of Complainant in selecting this option. Immediately after registering the domain names on January 8, 2008, Respondent erected a web site displaying information about cricket matches and where to watch the matches on the Internet. Both of the disputed domain names resolved to the web site. Respondent attaches a true copy of the site, as it appeared on the Internet on or about January 21, 2008, obtained from the archive. From January of 2008 to date, Respondent has actively worked on and promoted his web site, as can be seen from the constant revisions to the site as indicated by the archive records. Respondent attaches a current version of Respondent's web site. The web site offers consumers the ability to watch live and streamed cricket matches, primarily from the Indian Premier League (IPL) together with substantial cricket related information. Respondent charges the viewers for this service. Since its launch in January of 2008, Respondent's site has been very successful. Traffic records from Google Analytics, commencing on February 20, 2008 and ending on March 22, 2010, a period of over two years, show that Respondent has received a total of 1,380,673 visitors to his site. Of those visitors, 71.59% were returning visitors who enjoyed Respondent's services. Clearly, people visiting Respondent's site are going there and returning because of the cricket viewing services, not because of any mistake or confusion with Complainant. This is further confirmed by Google Analytic's "Key Word" statistics, which shows that the top key words used by viewers in Google searches to locate Respondent's web site, are "tvnsports", "tvn sports", "tvnsports.com", "www.tvnsports.com" and "tvnsports login". Respondent's web site is immensely popular, with over 30,000 registered users. Accordingly, Respondent has built up a very successful business for cricket viewing services, and has done so over the course of over two years, without being disturbed by Complainant. Now, Complainant is attempting through this proceeding, to hijack and seize Respondent's domain names, thereby attempting to destroy Respondent's business. This would be a gross injustice, but fortunately the UDRP does not assist Complainant. Confusing similarity
Although in the case of a world-famous marks (such as those relied upon by the Complainant in its Complaint, i.e. GUINESS, BLOOMBERG, EVIAN, YAHOO, BANK OF AMERICA, AOL, and MICROSOFT) it is reasonable to determine that the addition of the word, "sports", or other descriptor, would be confusingly similar, it is difficult to liken those situations with the case at hand. Complainant's TVN mark is not famous, not global, not novel or unique, and used by numerous TV networks, broadcasters, and TV channels, over the air, via cable, and via the Internet, world-wide. Legitimate rights and interests
Likewise, the numerous other TVN named businesses and web sites all over the world, also have a legitimate interest in their respective TVN names and domain names, even in connection with television and broadcasting related services. It is beyond credulity that Respondent would not have a legitimate interest, but the numerous others would. Obviously, Complainant's mark is not distinctive in most parts of the world and Complainant cannot therefore claim a worldwide monopoly. Complainant's allegation that Respondent is "misdirecting" Internet traffic is laughable. It has been unequivocally demonstrated that Respondent has a loyal following of customers who keep returning to Respondent because they value Respondent's services, not because of any "mistake" or confusion" with Complainant. To accept Complainant's argument would mean that the millions of people who visit and watch the TVN's in Poland, Australia, Chile, Panama, and Korea, are all being "misdirected" as well. It is respectfully submitted that an order transferring the disputed domain names to Complainant would be an egregious seizure of Respondent's entire business, depriving him of his bona fide and legitimate property rights. Bad Faith
Furthermore, Complainant had no registered trademark rights at the time that Respondent registered the disputed domain names, and has not demonstrated any pre-existing common law trademark rights. A mere pending trademark application does not confer any trademark rights under the UDRP or under US law. Accordingly, since Complainant was without any proven trademark rights at the time of Respondent's registration, it is impossible for domain names to have been registered in bad faith as understood by the Policy. Bad faith under the Policy can only arise if someone has registered a domain name to unfairly take advantage of another person's trademark rights. If this wasn't so, then trademark rights would not be required under the Policy - which they of course are in every case - as a precursor to jurisdiction. Furthermore, ipso facto, the test would not be whether one has trademark rights, but whether one registered the domain name first - which is of course, not the case. Without any proven trademark rights, it cannot be said, of course, that a Respondent "targeted" a trademark owner's trademark rights. Absent direct evidence that a Respondent specifically targeted a Complainant, bad faith will not be found to exist. There is no such evidence, direct or otherwise in this case. In fact, the evidence shows the exact opposite; that Respondent registered the disputed domain names in good faith, for a bona fide and active business, and has used them in good faith without any intention to interfere with Complainant's mark or business. Complainant has not demonstrated that Respondent has a single hallmark of a cybersquatter. Complainant hasn't demonstrated for example, that Respondent ever offered to sell the disputed domain names, that Respondent failed to erect an active web site or otherwise use the disputed domain names, that Respondent is intentionally attempting to attract misdirected traffic intending to go to Complainant, that Respondent is copying the look and feel of Complainant's web site, or that Respondent has any history or pattern whatsoever of cybersquatting. In short, there is not a single thing indicating that Respondent is a cybersquatter, other than totally bald and meritless allegations made by Complainant. In the present case, Complainant's unexplained failure to bring its claim of bad faith for over two years of active business by Respondent demonstrates that Complainant itself was likely unconcerned and did not believe that Respondent had acted in bad faith. Given the foregoing, it is incredible that Complainant would have the temerity to baldly state as it did at the outset of its Complaint that "It is beyond dispute that Respondent is engaged in cybersquatting and has violated the policy". Surely, the only thing that is "beyond dispute" in this case, is the total lack of any merit in Complainant's allegations. Reverse Domain Name Hijacking
There is no reasonable likelihood that Complainant, given that it is a purportedly sophisticated party with the benefit of legal counsel, was not aware of the multitude of "TVN" businesses all over the world, all having a legitimate interest in their domain names and business names. In the case at hand, Complainant must have been aware that Respondent was operating a bona fide business, just like the other numerous TVN businesses and did not likely register the disputed domain names for any reason to do with Complainant, and brought the Complaint anyway. Complainant's bringing of the Complaint must in this context be seen as bad faith, as otherwise it would be affording the Complainant the license to bring spurious and meritless claims, at great expense and inconvenience to the respondents, when it clearly knew or ought to have known better. It is difficult to view the Complaint as anything more than an attempt to grab domain names that it covets for itself, under purported coercive pressure of legal proceedings. C. Additional Submissions 1. Complainant
Respondent is incorrect that Complainant must show it has "a global
monopoly" on TVN and a "famous mark" or a "world-famous" mark to prevail
under the Policy. Policy
Although the Response fails to employ the legal terms typically used in analyzing trademark rights, Respondent appears to argue that Complainant's TVN mark is not distinctive and has been abandoned. However, these matters are not properly presented in the context of a dispute under the Policy and should be addressed to the national authority issuing the trademark registration. Respondent argues that the use of the initials T.V.N. by other entities (mostly foreign) eliminates Complainant's right to protection. Respondent ignores that a federal registration of a mark is prima facie evidence of validity, which creates a presumption that the mark is inherently distinctive. That third-parties use the initials T. V.N. in connection with their foreign businesses or in connection with unrelated U.S businesses such as a California sports memorabilia store, cannot undermine the USPTO's conclusion that the TVN mark is distinctive for identifying Complainant's goods and services. Respondent also appears to argue that Complainant has abandoned its TVN mark, providing as evidence of abandonment printouts from Complainant's website in which it refers to itself as Avail-TVN. First, it is well settled that a claim of trademark abandonment is outside the scope of the Policy. Second, Complainant has not abandoned its rights in the TVN mark. Accordingly, Respondent's repeated claims that Complainant "does not even call itself TVN" must be ignored. The most prominent theme in the Response is the claim that Complainant has not shown rights in its TVN mark that predate Respondent's registration of the contested domain names. This argument distorts the legal test for showing rights in a trademark under the Policy. As discussed above, it is well established that when a complainant has a trademark registration, the relevant date for showing "rights in the mark" for the purposes of the Policy dates back to complainant's trademark application filing date. In this case, Complainant filed its most recent application for the TVN Mark on January 17, 2007. After its application registered, this established Complainant's rights in the TVN Mark dating back to January 17, 2007. Thus, Complainant has already shown its rights in its TVN mark prior to January 8, 2008, when Respondent registered the contested domain names. Further, in case there is any doubt about this timeline, Complainant has also provided evidence of its prior lapsed federal registrations for the TVN mark registered on September 11, 1990 and May 12, 1992. Accordingly, there can be no doubt that Complainant can establish trademark rights in the TVN mark prior to Respondent's registration of the contested domain names. The contested domain names, <tvnsport.com> and <tvnsports.com>, are confusingly similar to the Complainant's TVN mark. The primary rebuttal argument in the Response, in which Respondent distorts the relevance of the trademark filing date, is discussed above. A secondary rebuttal argument in the Response seems to be that unless a trademark is famous, a domain name that incorporates a registered mark plus a generic word cannot be confusingly similar to that mark. It is not surprising that Respondent provided no citation for this proposition as it finds no support in any prior decision interpreting the Policy. Respondent claims in the Response that it had no notice of the dispute
prior to the Complaint. These claims reveal Respondent's willingness
to defraud the Panel in an attempt to retain use of the contested domain
names. In fact, Complainant sent
In addition to the evidence presented in the Complaint, Complainant has collected supplementary evidence of this point including evidence that in 2009 the tvnsports.com website contained language indicating that "TVNSports is part of the TVN network." Throughout the entire course of Respondent's registration and ownership of the contested domain names, Complainant has used the domain name <tvn.com> to provide information about its business and the services offered under the TVN mark, including its distribution of television programming. Complainant did not commence use of the additional Avail-TVN trade name until June 2009 at the earliest, long after Respondent's registration of the contested domain names. It is difficult to believe that Respondent never visited the domain name tvn.com and was unaware of Complainant's business and mark when it registered the domain names <tvnsport.com> and <tvnsports.com>. Further, when Respondent posted content on its website identifying its main office in California and referring to <tvnsports.com> as "part of the TVN network" it clearly sought to capitalize on the impression of sponsorship or affiliation with Complainant. In fact, as a result of Respondent's use of <tvnsports.com>, numerous customers were actually confused about the affiliation between Complainant and <tvnsports.com>. In April 2009, Complainant began to receive telephone calls on its technical support number from people referencing <tvnsports.com>. These callers were asking Complainant to resolve their billing and technical support questions related to programming from <tvnsports.com>. These callers indicated they had found Complainant's phone number online in their attempts to contact <tvnsports.com>. Further, the email sent by Respondent after receiving Complainant's cease and desist letter indicates that Respondent was aware of TVN and its business, and had been contacted by at least one existing TVN client with "sports VOD broadcast requests." This evidence of actual confusion among customers of both Complainant and Respondent, and Respondent's attempt to leverage such confusion to sell the domain names to Complainant is strong evidence of Respondent's bad faith. In its June 2009 email Respondent stated "With TVN's expertise in VOD (Delivery, Packaging, security...etc) it can be the supplier for this ever growing market. TVNSports/TVNSport domain can be used to promote any major sport including soccer, cricket, tennis etc." Respondent's offer to sell the domain name to Complainant may also be evidence of bad faith. 2. Respondent
Respondent's position in regards to the new evidence of previous communications between the parties, is that he himself was unaware of these communications. He has now determined that it was his brother who a year ago received the correspondence from the Complainant and responded to it. Respondent advises that his brother, who had managed the site at the time, did not advise him of the correspondence at the time or prior to receipt of Complainant's Additional Submissions. Respondent's position is that it would have been totally foolish and
irrational to have denied the existence of any previous correspondence
between the parties, if he had been aware of such correspondence, as it
would be bound to have been exposed by the
In any event, the email sent in reply to Complainant's letter, expressly
confirms
Respondent's brother now advises Respondent that when he received the letter from Complainant, he did not think that there was any harm in offering to sell the domain name to Complainant, since he believed that Complainant was interested or should be interested in Respondent's business, and that anybody is free to offer to sell their business to another party that may be interested. In any event, it was Complainant who first contacted Respondent, and
not the other way around. If Respondent had truly been a cybersquatter
as understood by the
Complainant has now presented in its Additional Submission, some evidence
of a single mistaken customer of Respondent who contacted Complainant.
Respondent advises that this allegation is simply incorrect. Respondent's web site has been up continuously since it was launched, and the dip in traffic referred to by the Complainant is a result of a slow period in cricket. The Internet Archive results in the Response clearly show the existence of a web site during the period that Complainant claims that the site was taken down. Complainant is attempting to shoehorn what appears to be trademark dispute into the limited confines of the UDRP. The Policy was not designed to be used as an all-encompassing form of
trademark protection. Rather it was intended only as a practical means
to deal with the limited circumstances of "abusive, bad faith cyber squatting".
Accordingly, the UDRP is the domain name registration was "abusive". i.e.
originally registered with the intent and for the purpose of capitalizing
commercially from a targeted complainant's trademark. The
Whether Complainant has a valid claim for trademark infringement is not a matter to be decided by a UDRP panel in a summary procedure; without the benefit of discovery and other legal safeguards provided by the court system designed to protect business owners from seizure and destruction of their business. Respondent advises that Respondent's web site supports Respondent and
his brother who are living in Canada while studying at university without
any family financial support. This is their entire livelihood. Taking away
Respondent's domain names will shut down their business. Respondent is
entitled to the full protections of a court of law and of trademark law
in his defense of allegations of trademark infringement and should not
be skewered in a summary fashion through the UDRP. The
Respondent has undertaken substantial advertising of its web site and business. This demonstrates that Respondent has created and promoted a business which it considers legitimate and is not consistent with any of the hallmarks of a cybersquatter. It is submitted that if Complainant is permitted to use the UDRP as a cheap legal hacksaw to pry Respondent's business away from him, it will wrongly serve to expand the intended and legitimate purpose of the UDRP. The UDRP is not a substitute for a legitimate trademark dispute. FINDINGS
Policy
DISCUSSION
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
Identical and/or Confusingly Similar
Respondent's many attacks (e.g., third-party use, abandonment) upon Complainant's registration-based rights are of no avail. Proceedings under the Policy are an improper forum to decide whether or not a registration is valid. See Private Communities Registry, Inc. v. Himalaya Rankings LLC et al., FA 1220432 (Nat. Arb. Forum Oct. 23, 2008); Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 26, 2006) ("The Respondent's remedy is to attack the trademark registration through a petition for cancellation, which action Respondent has failed to undertake."). While Respondent argues that its registration of the domain names predates
Complainant's alleged rights in the TVN Mark, the Panel finds that such
a determination is not necessary under Policy 4(a)(i). See
AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that
the UDRP does not require a complainant to have registered its trademark
prior to the respondent's registration of the domain name under Policy
4(a)(i) but may prevent a finding of bad faith under Policy 4(a)(iii));
see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat.
Arb. Forum Mar. 5, 2007) ("Although the domain name in dispute was first
registered in 1996, four years before Complainant's alleged first use of
the mark, the Panel finds that Complainant can still establish rights in
the CLEAR BLUE marks under Policy 4(a)(i).").
The Panel also finds that Complainant's rights in the mark date back to the filing date of the trademark registration. 15 U.S.C. § 1057(c). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant's rights in the KISSES trademark through registration of the mark with the USPTO "date back to the filing date of the trademark application and predate [the] respondent's registration"); Greenhouse Fabrics, Inc. v. Texas International Property Associates - NA NA, FA 1281603 (Nat. Arb. Forum Oct. 7, 2009) (finding that complainant had established rights in the mark as of its trademark application filing date); Samuel Hackwell v. Steven Bryant, FA 806493 (Nat. Arb. Forum Nov. 15, 2006) ("Registration was effective February 11, 2003, and constitutes prima facie proof of continued use of the mark dating back to the filing date of the application."); Granarolo s.p.A. v. Michele Dinoia a/Ida SZK.com, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) ("trademark registration, once granted, relates back to the date of filing of the application); SAFTPAY Inc. v. 3Pea International, Inc., FA 1154178 (Nat. Arb. Forum Jun. 2, 2008) ("When a Complainant holds a registered mark, the effective date of rights in that mark date back to the application filing date of the registered mark. "). Complainant contends that Respondent's disputed domain names incorporate Complainant's mark in full, modifying the mark only with the addition of the generic terms "sports" or "sport" and the generic top-level domain ("gTLD") ".com." The Panel finds that the addition of a single generic term fails to prevent confusing similarity under Policy 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent's <amextravel.com> domain name confusingly similar to Complainant's AMEX mark because the "mere addition of a generic or descriptive word to a registered mark does not negate" a finding of confusing similarity under Policy 4(a)(i)); Bloomberg L.P. v Bloomberg Sports, FA 96639 (Nat. Arb. Forum Apr. 2, 2001) (finding the domain name bloombergsports.com confusingly similar to the complainant's BLOOMBERG mark); Societe Anonyme Des Eaux Minerales d'Evian v. Evian Sport, FA 133620 (Nat. Arb. Forum Jan. 6, 2003) (finding the domain name eviansport.com confusingly similar to the complainant's EVIAN mark); Yahoo! Inc. and HotJobs.com, Ltd. v. Alex Vorot, FA 159547 (Nat. Arb. Forum Jul. 16, 2003) (finding the domain names yahoosport.com and sportsyahoo.com confusingly similar to the complainant's YAHOO! mark); Bank of America Corporation v. Chris Glenn, FA. 296608 (Nat. Arb. Forum Aug. 27, 2004) (finding the domain name bankofamericasports.com confusingly similar to the complainant's BANK OF AMERICA mark); AOL LLC v. Liuxin d/b/a Liuxin Liuxin, FA 812054 (Nat. Arb. Forum Nov. 21, 2006) (finding the domain name sportaol.com confusingly similar to complainant's AOL mark); Microsoft Corporation v. Tan Kim Fong, FA 1265720 (Nat. Arb. Forum Jul. 14, 2009) (finding the domain name msnsports.com confusingly similar to complainant's MSN mark). The Panel also finds that a gTLD is considered irrelevant in determining confusing similarity as gTLDs are required in domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. The Panel finds that the Complainant has met its burden of proof under Policy 4(a)(i). Rights or Legitimate Interests
The Panel finds that Complainant has made such a prima facie showing. Respondent is using the domain names in dispute for services within the scope of those for which Complainant has secured rights in the TVN Mark. Respondent's furnishing of information related to cricket matches via the Internet falls within the ambit of the "broadcasting" and "provision of telecommunications access to … events…" services for which the TVN Mark has been registered. Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name, for the purposes of Policy 4(a)(ii): (i) before any notice 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 and services; or
Respondent does not contend that it can avail itself of the defenses in Policy 4(c)(ii) or Policy 4(c)(iii). Respondent is not known by the domain names at issue and is using those domain names for commercial purposes. Respondent's defense is based on Policy 4(c)(i). And the essence of that defense is that Respondent's use is bona fide. In its Response, Respondent contended that it first became aware of Complainant and the TVN Mark through filing of the Complaint. After being challenged by Complainant, Respondent admitted that it knew of the dispute through receipt of a letter from Complainant dated May 6, 2009, and of an e-mail response from Respondent's brother dated June 19, 2009. At that time, it appears that Respondent's web site, accessed using the domain names at dispute, was active. Both Complainant and Respondent have submitted substantial arguments on this issue. Complainant contends that Respondent's use is an infringement of Complainant's rights under its U.S. trademark registration and is a violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a). Respondent contends that Complainant's use of the TVN Mark is limited to the digital media industry and that the TVN Mark is unknown in the consumer market in which Respondent uses the domain names at issue. But, the Panel need not consider any of these arguments. As previously noted, the effective date of Complainant's U.S. registration is its filing date, which is January 17, 2007. That filing date is constructive notice to Respondent (being governed by U.S. law) of Complainant's trademark rights. That filing date predates by almost a year the registration of the domain names at issue on January 8, 2008. Thus, Respondent had notice of the dispute prior to its registration and use of the domain names at issue and Policy 4(c)(i) is unavailable to Respondent. See Netbooks, Inc. v. Lionheat Publishing, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007)("The U.S. Trademark Act is clear that, once registration has occurred, the filing of the application to register the mark is constructive use of the mark, giving a nationwide right of priority on or in connection with the goods specified in the registration, with certain exceptions not pertinent here. 15 U.S.C. § 1057(c). See Ideal Prods., LLC v. Manila Indus., Inc., FA 819490 (Nat. Arb. Forum Nov. 26, 2006)("As of April 30, 2002 (the filing date of the application for U.S. registration of SANI-TRED), Respondent was on notice of Complainant's trademark rights. Respondent cannot say that its preparation to use the domain name was without notice of the dispute, or that its use of the domain name was a bona fide offering of goods or services, given that notice."). But, Respondent is a national or resident of the U.K. Nonetheless, the evidence does show that Respondent has substantial connections with the U.S. The registrar for the domain name at issue is a U.S. corporation, the technical contact for the domain name is located in the U.S., and the Web site being operated using the domain name includes links primarily to businesses located in the U.S. Although the Panel does not believe that the constructive notice provisions of 15 U.S.C. §1057(c) have extraterritorial effect, it does believe that such provisions apply to Respondent in the present proceeding and thus finds that Respondent had notice of the dispute as of 1995 before it registered the domain name at issue.") Panelist Condon and Chair O'Connor find that Complainant has met its burden of proof under Policy 4(a)(ii). Panelist Cabell disagrees on this point - contending that the prior notice of a dispute referred to in Policy 4(c)(i) refers only to a UDRP complaint and not to any generic notice implicit in the registration of a mark. Registration and Use in Bad Faith
Paragraph 4(b) reads: [T] he following circumstances, in particular but without limitation,
if found by the Panel to be present, shall be evidence of the registration
and use of a domain name in bad faith:
In each of the circumstances listed in Policy 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain names at issue for the purpose of causing injury to the Complainant. Lack of rights or legitimate interests under Policy 4(a)(ii) does not automatically translate into a finding of bad faith under Policy 4(a)(iii). Proof of Policy 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Complainant's case for bad faith rests on the following: that the parties are in direct competition; that there is a likelihood of confusion between the TVN mark and the domain names in dispute; that Respondent has signaled its knowledge of and intent to cause injury to Complainant by stating that "TVN Sports is part of the TVN network" and by having a listed office in the state of California where Complainant is located; that Respondent took its web site down for a while after receiving Complainant's demand; that there has been actual confusion of customers; and that Respondent, when confronted with Complainant's demand, offered to sell the domain names to Complainant. Respondent's case for the lack of bad faith rests on the following: that it had no actual knowledge of Complainant prior to registration and use of the domain names; that it does not directly compete with Complainant; that Respondent's web site does not emulate the look and feel of Complainant's web site; that Respondent registered and used the domain names before the effective date of Complainant's trademark registration; that the repeat visitors and registered users of its site indicate that Respondent is not attempting to disrupt Complainant's business by creating confusion or to attract Complainant's customers; that Complainant delayed for almost two years before filing the Complaint; that Respondent's web site has been continuously operating since it was first set up; that there was only a single instance of possible confusion of customers; that the offer to sell the domain names was made by Respondent's brother who was responding to a routine business inquiry from Complainant and who did not inform him of the offer; that Complainant is trying to shoehorn a claim for trademark infringement into the narrow confines of the Policy. Some of Respondent's contentions can be dismissed summarily. As previously discussed, the effective date of Complainant's trademark registration is before the date of registration of the domain names in dispute. A delay of two years in filing the Complaint is not enough to establish that Complainant was unconcerned about Respondent and did not believe that Respondent acted in bad faith. One of Complainant's contentions can be dismissed summarily. Actual confusion is immaterial to a finding of likelihood of confusion, unless proven which is not the case here. Regarding Policy 4(b)(i), Complainant has not shown that Respondent registered or used the domain names primarily for selling, renting, or otherwise transferring the domain names to Complainant. Respondent has adequately demonstrated that it has a viable, ongoing, and successful business using the domain names. Regarding Policy 4(b)(ii), Complainant has not contended that Respondent is engaged in a pattern of registering domain names to prevent trademark or service mark owners from reflecting their marks in corresponding domain names. Regarding Policy 4(b)(iii) and Policy 4(b)(iv), substantial arguments have been advanced for both parties. Respondent is correct that the parties are not in direct competition, and that its web site does not show any attempt to disrupt Complainant's business or divert business to Respondent's web site. Complainant is correct that Respondent's reference to "TVN network" and Respondent's address in California could be viewed as references to Complainant and thus show Respondent's intent to trade on the goodwill and reputation of Complainant. On balance, the Panel finds that Respondent's contentions are adequate to overcome those of Complainant. Complainant has not shown that there is a "TVN network" or that Complainant would be recognized by Internet users as being located in California. Further, Respondent has developed a substantial and independent business at its web site; Complainant has not demonstrated that Respondent's success has been based on intentional diversion of Complainant's customers. The Panel finds that Complainant has failed to meet its burden of proof under Policy 4(a)(iii). REVERSE DOMAIN NAME HIJACKING
The Panel does not find reverse domain hijacking to be present in this case. Complainant has proved Policy 4(a)(i) and 4(ii) of the Policy, and accordingly has proceeded in good faith. See EU Property Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (finding insufficient evidence to support a finding of reverse domain name hijacking where the panel found that the complainant had no obvious interest in obtaining the respondent's domain name for its own use and the complainant had raised some plausible arguments). DECISION
Bruce E. O'Connor, Chair |
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