CTV Inc. v. Murat Yikilmaz
Claim Number: FA0804001177671
PARTIES
Complainant is CTV Inc. (“Complainant”), represented by Lisa
Martz, of McCarthy Tetrault LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ctv.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Hon. Roger P. Kerans (Ret.), Diane Cabell,
Esq., and James A. Carmody, Esq., (Chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 15, 2008.
On
On April 23, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 13, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@ctv.com by e-mail.
A timely Response was received and determined to be complete on
An Additional Submission was received from Complainant on
An Additional Submission was received from Respondent on
On May 27, 2008, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. Roger P. Kerans (Ret.), Diane Cabell, Esq., and James A.
Carmody, Esq., (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTION
A. Complainant makes the following assertions:
1. Respondent’s <ctv.com> domain name is identical to Complainant’s CTV mark.
2. Respondent does not have any rights or legitimate interests in the <ctv.com> domain name.
3. Respondent registered and used the <ctv.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent
is a resident of
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain name at issue in good faith.
C. Additional Submissions
Each of the parties timely filed an Additional Submission which
essentially restated the positions in the Complaint and Response.
FINDINGS
Complainant has registered rights
in the CTV mark (Canada Reg. No. TMA197826 issued March 1, 1974) and (USPTO Reg.
No. 1,053,080, issued November 16, 1976) and has used the mark extensively to
identify its broadcast transmissions and other goods and services since 1961 in
Respondent has provided
evidence in the form of a copy of his passport and other identification
materials to the effect that he is a resident of
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “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.”
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;
(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.
Complainant’s registration of the mark with the USPTO
confers sufficient rights in the mark upon Complainant under Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require the complainant to demonstrate ‘exclusive rights,’ but only that the
complainant has a bona fide basis for making the complaint in the first
place).
Respondent’s <ctv.com> domain name is identical to
Complainant’s CTV mark in that it is a complete and accurate copy of the
mark. The addition of the generic
top-level domain “.com” is irrelevant under a Policy ¶ 4(a)(i) analysis. Therefore, Respondent’s domain name is
identical to Complainant’s mark under Policy ¶ 4(a)(i). 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); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
However, Respondent has brought forward evidence that he
purchased the fourteen year old domain name at issue in 2007 without any actual
or constructive knowledge of Complainant’s CTV mark, which is apparently not in
worldwide usage and does not enjoy worldwide trademark registration. Respondent says that he has investment plans
for the <ctv.com> domain name and
currently uses it in connection with a search engine with advertising on the
associated web page. This is some evidence
of his rights and legitimate interests in the domain name at issue. See Workshop Way, Inc. v.
Harnage, FA 739879 (Nat. Arb. Forum
The
three letters which constitute the essence of the <ctv.com> domain name are generic initials and in common use by
many parties to identify many goods and services. Accordingly, Complainant does not have a monopoly
on these terms on the Internet. The fact that Complainant’s use of CTV to
identify its goods and services is apparently exclusive to the North American
continent strengthens Respondent’s argument.
For example, Respondent provided evidence that “ctv” is a common
abbreviation worldwide for numerous phrases, including “color television,”
“consolidated tax voucher,” and “cell tolerance variation.” Since the domain name at issue is comprised
of common terms, not unique to Complainant, at least outside North America,
Respondent’ own use has established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging,
Inc. v. V Entm’t, FA 203207
(Nat. Arb. Forum Jan. 5, 2004) (finding that the
respondent was using the <kaleidoscope.com> domain name for a bona
fide offering of goods or services because the term was “generic” and
respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes); see
also Qwest
Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum
Respondent’s registration
of a three-letter disputed domain name with the goal of attracting Internet
traffic is a legitimate business interest, especially in this case where none
of the advertisements listed on the corresponding website related to
Complainant’s television operations. Respondent
has made demonstrable preparations to use the disputed domain name in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA
105983 (Nat. Arb. Forum May 20,
2002) (finding that using a domain name consisting of a common descriptive and
generic expression as a portal to a website featuring various advertisements
and links is a bona fide offering of goods or services); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr.
20, 2001) (finding that, absent bad faith, the operation of a portal website is
a legitimate interest).
A majority of the Panel finds that
Policy ¶ 4(a)(ii) has not been satisfied.
Complainant has failed to meet the
burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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 the 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
Further, as noted above, Respondent
has rights or legitimate interests in the <ctv.com>
domain name pursuant to Policy ¶ 4(a)(ii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum
Accordingly, and in any event, a
majority of the Panel finds that Policy ¶ 4(a)(iii)
has not been satisfied.
DECISION
The Complainant, having failed to establish all three elements required
under the ICANN Policy, a majority of the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Chair
Diane Cabell, Esq.
Dated: June 10, 2008
Hon.
Roger P. Kerans (Ret.), dissenting:
I fail
to see why a resident of country A can interfere with an established trade mark
in country B even if he is free to use it in country A. The essential problem
in this case is the universality of the Internet. I agree with the majority
that Complainant cannot assert its trademark throughout the world. It can,
however make a powerful case in
In any
event, I consider the evidence sufficient to show that it is a reasonable inference
that a registrant, at time of registration, and this Respondent using the
domain name thereafter, knew of the existence of Complainant’s business and
mark in
Honorable Roger P. Kerans
Arbitrator
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