Gemstar-TV Guide International, Inc. v. Ross LeBel
Claim Number: FA0204000112583
Complainant is Gemstar-TV Guide International, Inc., Pasadena, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Ross LeBel, Blaine, WA (“Respondent”).
The domain name at issue is <tvguide.biz>, registered with Gal Communications Ltd.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 27, 2002; the Forum received a hard copy of the Complaint on May 1, 2002.
On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <tvguide.biz> domain name is identical to Complainant’s TV GUIDE mark.
2. Respondent has no rights or legitimate interests in the <tvguide.biz> domain name.
3. Respondent registered the <tvguide.biz> domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of numerous TV GUIDE marks registered with the U.S. Patent and Trademark Office (“USPTO”), specifically, Reg. Nos. 2,554,596; 2,312,449 and 2,144,499, among others. Complainant is a global diversified media and communications company that has utilized the TV GUIDE mark in the entertainment and publishing business for the past fifty years. Complainant distributes its products in the U.S. to over 100 million homes each week, and markets its products internationally to forty-five countries. In December of 1994, Complainant expanded its offerings by launching a website available at <tvguide.com>.
Respondent registered the disputed domain name on March 27, 2002 and has yet to develop a purpose or an attached website. Respondent is not a franchisee or a licensee of Complainant. Complainant’s investigation has shown that Respondent is a habitual registrant of domain names incorporating famous marks.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical 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 or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has established that it has rights in the TV GUIDE mark through trademark registration with the USPTO and continuous subsequent international use. Respondent’s <tvguide.biz> domain name is identical to Complainant’s TV GUIDE mark in spelling and form, thereby satisfying the identical inquiry. The addition of gTLDs and the deletion of spaces are inconsequential factors when conducting an identical inquiry under the STOP Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Complainant has established that it has rights in the disputed domain name because it is the owner of the relevant registered trademarks in the U.S. and has made continuous use of its TV GUIDE mark in international commerce. There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <tvguide.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Furthermore, due to the international fame and widespread use of Complainant’s TV GUIDE mark, it can be inferred that Respondent is not the owner of a trade or service mark that is identical to the contested domain name. Therefore, Respondent has no rights or legitimate interests in the <tvguide.biz> domain name under STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).
Respondent’s use of a domain name identical to Complainant’s established mark implies that Respondent intends to divert Internet users interested in Complainant’s services or products to Respondent’s website. Respondent’s registration of <tvguide.biz> is not in connection with a bona fide offering of goods and services under STOP Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that Respondent’s intended use of the <peachtree.biz> domain name to provide information and services related to Complainant’s PEACHTREE product, but without Complainant’s authorization, would cause customer confusion and is not a bona fide offering of goods or services).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s mark represents an established American icon of the past fifty years. Complainant’s achievements include developing a corresponding website at an identical domain name and international distribution sales to over forty-five countries. Respondent’s <tvguide.biz> domain name is identical to Complainant’s established TV GUIDE mark resulting in the likelihood that Internet users will believe that there is some affiliation between Respondent and Complainant; notwithstanding the fact that Respondent had no authorization to make use of Complainant’s mark. Registration and use of the <tvguide.biz> domain name is evidence of bad faith pursuant to STOP Policy ¶4(b)(iv) since it is inevitable that Respondent will attract unsuspecting Internet users seeking Complainant’s website based on the goodwill associated with its mark. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under [UDRP] Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the [UDRP] Policy”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).
Additionally, due to the aforementioned fame of Complainant’s mark, the nature of the STOP proceedings and Respondent’s historical tendencies to infringe on established marks, Respondent was, at the very least, constructively aware of Complainant’s TV GUIDE mark. Respondent was aware that it was intentionally infringing upon Complainant’s mark; thus, incorporating the identical mark into a domain name represents bad faith under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Gehl Co. v. Gehl, FA 102816 (Nat. Arb. Forum Jan. 30, 2002) (finding that the “long standing use and historic nature” of the Complainant’s GEHL mark put the Respondent on notice as to the existence of the mark, thereby making Respondent aware that it was infringing upon Complainant’s rights)
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-Up Trademark Opposition Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <tvguide.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 14, 2002
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