National Arbitration Forum

 

DECISION

 

Automotive Networks Corporation v. Scripps Networks LLC c/o Phil Cornell

Claim Number: FA0809001224664

 

PARTIES

Complainant is Automotive Networks Corporation (“Complainant”), represented by James A. Barisano, of Automotive Networks Corporation, Massachusetts, USA.  Respondent is Scripps Networks LLC c/o Phil Cornell (“Respondent”), represented by Brandt Gebhardt, of Baker and Hostetler, Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mywheelstv.com> and <wheelstv.com>, registered with Markmonitor Inc.

 

PANEL

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2008.

 

On September 15, 2008, Markmonitor Inc. confirmed by e-mail to the National Arbitration Forum that the <mywheelstv.com> domain name is registered with Markmonitor Inc. and that the Respondent is the current registrant of the name.  Markmonitor Inc. has verified that Respondent is bound by the Markmonitor 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 September 19, 2008, Markmonitor Inc. confirmed by e-mail to the National Arbitration Forum that the <wheelstv.com> domain name is registered with Markmonitor Inc. and that the Respondent is the current registrant of the name.  Markmonitor Inc. has verified that Respondent is bound by the Markmonitor Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On September 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 16, 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@mywheelstv.com and postmaster@wheelstv.com by e-mail.

 

A timely Response was received and determined to be complete on October 16, 2008.

 

On October 21, 2008, Complainant sent a “Submission of Other Written Statements and Documents in Accordance with The National Arbitration Forum Supplemental Rule 7(a)” to The Forum. This submission was timely made. On October 27, 2008, Respondent submitted a reply to Complainant’s Additional Submission. Respondent’s Reply was also timely.

 

On October 23, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

In its Complaint, Complainant contends the following:

-         Complainant’s registered trademark, WHEELSTV is identical to the name used in the URL currently registered to Respondent, <wheelstv.com> and confusingly similar to Respondent’s URL <mywheelstv.com> and Complainant’s common law trademark, WHEELS.

-         Complainant and its legal predecessors have been using the common law trademarks, WHEELS and WHEELS TV, since 1995, first to describe a series of television documentaries on the history of the automobile and then to describe a television program network based on the series’ automotive themes.

-         Respondent has never used the URLs in question with a bona fide offering of goods and services except to divert WheelsTV’s Internet traffic from WheelsTV®, the rightful trademark holder, to Respondent’s <DIY.com> website. Respondent has ceased using the URL in question. The only value of URL in question to Respondent is to block a legitimate competitor from gaining the benefits of their use.

-         Complainant’s first use of common law trademarks WHEELS and WHEELS TV predates Respondent’s registration. Respondent no longer has any use of either URL except to extract money from Complainant in bad faith and unfairly damage WheelsTV’s market position.

-         Respondent has never been commonly known by the domain name <wheelstv.com>. Respondent has not made a legitimate noncommercial or fair use of the domain name.

-         Respondent, owner of cable networks Home and Garden and DIY, a channel containing automotive programming, registered the URLs in question subsequent to the first use in commerce by Complainant per trademark registration: Respondent has used the URLs to divert Internet traffic from WheelsTV and to DIY.com. In June 2006, Respondent offered to transfer the URL <wheelstv.com> to Complainant on a “rent to own” basis for a cost of $50,000. After much discussion, Respondent reduced the price to $25,000 and submitted an agreement draft. This compensation was far in excess of the cost of registration and maintenance, and is in violation of ICANN policies against “cybersquatting.” 

-         Respondent registered, re-registered and updated the domain names primarily for the purpose of disrupting the business of a competitor. WheelsTV is a fledgling television and Internet network competing directly with Scripps’ DIY and Home and Garden Networks. DIY and Home and Garden are established television networks owned and operated by Respondent which include automotive programming in their schedules. Respondent has never used the URLs in question except to divert Internet users from WheelsTV, the registered trademark and universally recognized brand holder, and to its <DIY.com> website. Complainant’s first use in commerce, as evidenced in the US Patent and Trademark documents, pre-dates Respondent’s registration of .com URLs. The Wheels TV series appeared on PBS and on Speedvision prior to Respondent’s use. Respondent, being in the television network business, knew or should have known of the Wheels TV series.

 

B. Respondent

In its Response, Respondent contends the following:

-         Complainant has not established that it has any rights in the Domain Names. Although Complainant sets forth a United States trademark registration for WHEELS TV and Design, the registration is not determinative of Complainant’s rights in this situation given the admissions of Complainant and other available evidence, and Complainant presents no evidence of common law rights that would substitute for the registration. Complainant alleges that it filed its United States service mark application on September 16, 2004, five years after Scripps Networks registered the domain names in question.  It provides a printout from the United States Patent and Trademark Office in support of such allegation.  That printout also indicates that Complainant filed its application on the basis of actual use in commerce. Complainant therefore alleged it was using WHEELS TV and Design at the time of filing in connection with the listed services:  “satellite, cable, video on demand and broadband network transmission of sounds, images, signals and data of wheeled vehicles” in Class 38.  However, Complainant alleges in its Complaint only uses that fall into Class 41 – services relating to production and distribution of programming.  Complainant’s blatant omission of the registered services from its list of uses is tantamount to an admission that the registered services have never been and are not now offered. If there were any doubts about whether or not Complainant was offering network transmission services in September 2004, such doubts are dispelled by Complainant’s statements in a February 2005 interview attached to the Response as Exhibit 2.  Mr. Barisano admits that network transmission services, as opposed to production and distribution of programming, were not planned to launch until mid-2005:  “At the core it's a linear network, WheelsTV, that will be launching in mid-'05.”

-         Moreover, an article from Business Wire also attached to the response proves that the launch of the WheelsTV broadband network did not occur until the end of June 2006, nearly two years after Complainant represented to the Trademark Office that it was using the mark WHEELS TV and Design in connection with “broadband network transmission.”

-         Even if the Panel recognizes Complainant’s alleged rights, Complainant’s own Complaint along with the evidence enclosed with the response demonstrate that Complainant chose its network name years after Scripps Networks’ registration of the domain names, and with full knowledge of the unavailability of those domains.  It knowingly chose to adopt a mark without what it now claims would be key assets.  In short, Complainant is attempting to take by force that which was not available to it when it selected its mark.

-         Scripps Networks has a legitimate interest in the domain names and has registered and used the domain names in good faith.

 

C. Additional Submissions

The Additional Submissions of the Parties do not add anything substantial to the allegations contained in the Complaint and the Response.

 

FINDINGS

Complainant failed to prove that it has rights in the trademark upon which the Complaint is based. It is unnecessary for the Panel to examine the second and third elements of the Policy for concluding, as it does, that the Complaint must fail.

 

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.

 

Identical and/or Confusingly Similar

The first element of the ICANN Policy requires a complainant, first, to prove that it has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to such mark. To that effect, the ICANN Policy does not distinguish between registered and unregistered marks. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (acknowledging that Policy ¶ 4(a)(i) refers merely to a “trademark or service mark,” without expressly limiting itself to a registered trademark or service mark, and further recognizing that the WIPO Final Report of April 1999, from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names, and further concluding that the Policy is applicable to unregistered trademarks and service marks); see also Hankison Int’l v. Hankisoninternational.com, FA 94393 (Nat. Arb. Forum May 3, 2000) (considering that trademark rights are acquired and maintained by actual use of the mark in commerce and that unregistered marks also are protected under common law principles, and finding that the domain name in issue was nearly identical to the complainant’s name and long-used unregistered mark).

Complainant applied for the trademark WHEELSTV (design plus words, letters and/or numbers) before the USTPO after Respondent had registered the domain names at issue. This time sequence must be taken into consideration in order to determine whether the unregistered mark complies with Policy ¶ 4(a)(i). Complainant contends that it and its legal predecessors have been using the common law trademarks, WHEELS and WHEELSTV, since 1995.

Accordingly, Complainant must establish that it had common law rights to said marks by May 12, 1998 and May 6, 1999, the dates on which Respondent registered the <mywheelstv.com> and <wheelstv.com> domain names, respectively.  As recognized by this panelist in the unanimous decision in RecruitUSA Inc. v. Krueger, FA 1203764 (Nat. Arb. Forum Aug. 5, 2008), the standards required to this effect by panels include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).

Apart from the printout from the USTPO database corresponding to the WHEELSTV mark, Reg. No. 3,027,896, Reg. date December 13, 2005, which states August 1, 1995 as first use in commerce, Complainant does not present the Panel with any other evidence of use of such mark or the WHEELS mark. While the Panel does not wish to suggest that Complainant’s statements of first use and first use in commerce before the USTPO were anything but true, those statements alone, in the absence of additional evidence, are not sufficient, for purposes of this proceeding, to prove common law rights in the WHEELSTV mark by the relevant dates of 1998 and 1999. In particular, Complainant does not present the Panel with any details on sales conducted under the WHEELSTV mark, or on advertising, or on surveys and media recognition, or any other proof to establish that this mark had become distinctive and hadacquired secondary meaning for services of International Class 38.  The same applies to the WHEELS mark.

Based on the instant record, the Panel concludes that Complainant has failed to prove that it had rights in the WHEELSTV and WHEELS marks when Respondent registered the domain names at issue, five years before the trademark application for WHEELSTV. Since these marks consist of or contain the term “wheels”, a common word obviously related to the automotive sector, evidence of a secondary meaning is even more necessary than in cases where the mark is fanciful.

In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the disputed domain names, or whether it has registered and is using them in bad faith.  See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). 

DECISION

Since Complainant failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Respondent requests that the Panel make a finding of reverse domain name hijacking. Since Respondent failed to present any evidence of bad faith or abuse of the proceeding by Complainant, Respondent’s request is DENIED.

 

 

 

Roberto A. Bianchi, Panelist
Dated: November 6, 2008

 

 

 

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