Raycom Media, Inc. v. Gawen Lawrence
d/b/a Arrow Enterprises, Inc.
Claim Number: FA0302000147306
Complainant is Raycom Media, Inc., Montgomery, AL (“Complainant”) represented by John C. Alexander, Esq. of Raycom Media, Inc. Respondent is Gawen Lawrence d/b/a Arrow Enterprises,
Inc., Kirksville, MO (“Respondent”) represented by Barry V. Cundiff, Esq. of Frick
& Cundiff, PC.
The
domain name at issue is <ktvo.com>
registered with Network Solutions, Inc.
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.
M. Kelly Tillery, Esq. as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 28, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 4, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <ktvo.com> is
registered with Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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 10, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 31,
2003 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@ktvo.com by e-mail.
A
timely Response was received and determined to be complete on March 31, 2003.
A
timely Additional Submission was received from Complainant on April 4, 2003.
On April 9, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed M. Kelly Tillery, Esq. as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
1. it is the owner of KTVO License
Subsidiary, Inc., a corporation which is the owner of the “KTVO” service mark
registered with the United States Patent and Trademark Office in International
Class 38 for Television Broadcasting Services. (Registration #2,606,824;
registered on August 13, 2002; first use in commerce: November 21, 1955);
Kirksville, Missouri;
3.
it uses the
mark KTVO on letterhead, business cards, television advertisements, advertising
brochures, on its website www.raycommedia.com,
and in other ways customary to the trade;
4. it has acquired common law rights in the mark
“KTVO” as a result of continuous use of same for a period of 45 years;
5. the domain name <ktvo.com>
is identical to the Federally Registered and
common
law mark “KTVO” owned by KTVO License Subsidiary, Inc.;
6. the domain name <ktvo.com>
is confusingly similar to the mark of Complainant;
7. Respondent has registered the domain name
in order to prevent Complainant
from
reflecting the mark in a corresponding domain name and has intentionally
attempted to attract for commercial gain, Internet users to Respondent’s
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship or endorsement of Respondent’s website or location;
8. Respondent has no rights or legitimate
interests in respect to the domain name as
there
has been little or no activity on its website since 1999;
9. both Complainant and Respondent serve and
are located substantially in the same
geographical
market area, i.e., Kirksville, Missouri;
10. Respondent’s registration and use of the
domain name deprives Complainant of
substantial
revenues and consumer good will and impairs electronic commerce;
11. Respondent’s website shows only a page
“under construction” named “Kirksville
Total
Virtual Outlet” with a hyperlink to Arrow Enterprises which brings up an Arrow
Enterprises Web Hosting and Design Advertisement;
12. the domain name <ktvo.com>
is not the trade name or company name of Respondent and Respondent is not
commonly known by that name and the name does not bear any legitimate
relationship to the business of Respondent, which is selling real estate and
designing and hosting websites;
13. Respondent is in fact known by the
company name Arrow Enterprises, Inc.;
14. Respondent registered and is using the
domain name <ktvo.com> in bad faith;
15. Respondent and Arrow Enterprises, Inc.
are one and the same person or company;
16. Respondent owns an Assist 2 Sell
franchise, a real estate company in Kirksville, Missouri;
17. Complainant contacted Respondent on
several occasions to secure a
transfer
of the domain name but was not successful;
18. On June 19, 2002, Complainant received an
e-mail from “intruder”
<arrowed@swbell.net> over the signature
of Galen Lawrence, the Respondent, offering to sell the domain name for
$15,000.
B. Respondent
Respondent contends that:
1. he decided in 1999 to attempt to create
an online business called “KirksvilleTotal
Virtual Outlet” to sell products in the
community by way of on-line advertising;
2.
he
registered the domain name on February 21, 1999 and soon thereafter began
developing a web page and also began looking for businesses that might wish to
sell products through that page;
3. sometime thereafter, Complainant
contacted Respondent attempting to purchase the domain name;
4. he made contact with an on-line advertising
broker that would give him access to a number of different companies who would
be willing to advertise on the site;
5. he has delayed opening his website for
fear that he would lose the
domain
name and have to redevelop the site due to “repeated harassment” by Complainant
in the form of threats, express or implied and that Respondent would face legal
action if he did not concede to Complainant’s demand and turn over the domain
name;
6. work on the website is virtually complete
but it has not been opened to the public;
7. he offered to sell the domain name to
Complainant for what he thought was a fair price;
8. Complainant’s mark was not registered
until August 13, 2002 and not at the time the domain name was registered on
February 21, 1999;
9. Television and radio station call letters
assigned by the Federal Communications Commissions do not, in and of
themselves, give rise to trademark rights and Complainant cannot claim to have
trademark rights in “KTVO” at the time of Respondent’s registration of its domain
name;
10. Respondent’s activities in developing its
website show that it has a legitimate interest in the domain name;
11. Complainant presents no evidence to
support its allegation that the domain name was registered in bad faith;
12. Complainant presents no evidence that
would indicate that Respondent registered the domain name in order to prevent
Complainant from having or for the purpose of disrupting Complainant’s
business;
13. he is not a competitor of Complainant and
intends to develop an entirely different business;
14. he offered to include a link on his page
in order to avoid any confusion which might arise from the similarity of the
domain name and Complainant’s call letters.
C.
Additional Submissions
Complainant further contends that:
1. although Respondent claims that he has
virtually completed an on-line store on
<ktvo.com>, he has offered no proof of same;
2. since 1999, Respondent has made no use of
the website except for a hyperlink to
Arrow Enterprises, Inc.;
3. Respondent recently changed the website
by deleting the hyperlink to Arrow
Enterprises, Inc.;
4. Complainant never threatened Respondent
but simply made a reasonable offer to
resolve this matter in an attempt to
avoid this proceeding.
1. Complainant has met its burden to
prove by a preponderance of the credible, relevant, admissible evidence that
Respondent’s domain name is confusingly similar to a mark in which Complainant
has rights. Policy ¶ 4(a)(i).
2. Complainant has met its burden to prove
by a preponderance of the credible, relevant, admissible evidence that
Respondent has no rights or legitimate interest in respect to the domain name.
Policy ¶ 4(a)(ii).
3. Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondent’s domain name has been registered and is
being used in bad faith. Policy ¶ 4(a)(iii).
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 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
(2)
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.
There
is no dispute, nor could there be, that Respondent’s domain name <ktvo.com>
is identical to the call letters used by the TV station operated by KTVO
License Subsidiary, Inc. There is also
no dispute that KTVO License Subsidiary, Inc. is the owner of a service mark
“KTVO” registered on the Principal Register of the U.S. Patent and Trademark
Office, Registration No. 2,606,824, on August 13, 2002 in International Class
38 for Television and Broadcasting Services.
That registration indicates that the first use of the mark by Registrant
KTVO License Subsidiary, Inc., a Michigan Corporation, was on November 21,
1955, that the Application for Registration was filed on October 18, 2000 and
that the Registration was issued on August 13, 2002. Although the service mark was not registered until over three (3)
years after the domain name registration, it is undisputed that the service
mark had been in use continuously in connection with television broadcasting
services for more than forty-three (43) years prior to the domain name
registration. Such lengthy and
widespread use establishes strong and valuable common law trademark
rights. Under these circumstances,
there is no doubt that KTVO License Subsidiary, Inc. has rights in a service
mark and that Respondent’s domain name is identical to it.
However,
that does not end the inquiry under ICANN Policy ¶ 4(a)(i). Curiously, the Complainant is not KTVO
License Subsidiary, Inc., but rather another corporation, Raycomm Media, Inc.,
which alleges that it is the “owner” of KTVO License Subsidiary, Inc. While that could be a problem for Complainant
Raycomm Media, Inc., ICANN Policy 4(a)(i) does not require that Complainant
actually be the registered owner of a trademark or service mark but rather only
requires that the Complainant “have rights” in and to a trademark or service
mark which is identical or confusingly similar to Respondent’s domain
name. Raycomm Media, Inc. has
sufficiently and clearly alleged that it is the owner of KTVO Subsidiary, Inc.
which is in fact the owner of a Federally Registered service mark for “KTVO.” Respondent has neither denied the truth of
that well-plead allegation nor presented any evidence to the contrary. Under those circumstances, this Panel finds
that Complainant Raycomm Media, Inc., albeit not the actual owner of the
Federally Registered service mark “KTVO,” does in fact have rights in and to that
service mark as the parent/owner of the registered owner. Under these circumstances, Respondent’s
domain name is identical to a service mark in which a Complainant has rights.
Respondent contends that he has rights or
legitimate interests with respect to the domain name because he registered it
on February 21, 1999, began developing a web page, and began looking for
businesses that might wish to sell products through his web page. In fact, Respondent contends that “work on
the website is virtually complete” but that “it has not been opened to the
public” because of “threats” of Complainant to take legal action, which, of
course, Complainant has now done in this proceeding.
Respondent thus claims the benefit of
Policy ¶ 4(c)(i) that he has rights or legitimate interests with respect to the
domain name because before he received notice of this dispute he made
demonstrable preparations to use the domain name in connection with a bona fide
offering of goods and services. Other
than Respondent’s representations in his Response, the only evidence of
record of any such “demonstrable preparations” are annexed to Complainant’s
Complaint as Annex “C,” which appear to be photocopies of the home (only) page
of the <ktvo.com> website, which simply indicates a site “coming
soon” with a link to another site of Respondent for an unrelated business.
Under these circumstances and given the fact that it is not
disputed that the website has not been operated since the domain name registration
in February of 1999 (over four (4) years), this Panel cannot find that there
are sufficient demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services on the part of Respondent. Thus, this Panel cannot find that Respondent
has any rights or legitimate interests in respect of the domain name. ICANN Policy ¶ 4(a)(ii).
Although Respondent is correct that
Complainant’s service mark was not registered in the United States Patent and
Trademark Office until August 13, 2002, long after the February 1999
registration of the domain name in question, it is undisputed that
Complainant’s mark has been in use on a local television station in the area in
which Respondent does business since as early as November 21, 1955. Under those circumstances, Respondent can
hardly and does not deny that he was well aware of the existence of Complainant
and Complainant’s widespread use of its mark in connection with television
broadcasting services. Under those
circumstances, before Respondent registered the domain name, he was well aware
of the substantial and widespread recognition accorded the call letters and
mark of Complainant’s TV station.
Since the domain name links to a site of
another business of Respondent, this Panel has no trouble finding that
Respondent has intentionally attempted to attract for commercial gain, internet
users to his website by creating a likelihood of confusion with Complainant’s
mark, as to the source, sponsorship, or affiliation of his website or location
of product or service of his website or location. ICANN Policy ¶ 4(b)(iv).
Further, Respondent does not dispute that
he offered to sell the domain name to Complainant for $15,000, which would be
far in excess of any reasonable documented out-of-pocket costs directly related
to the domain name. The Panel also
finds that there are circumstances indicating that Respondent has registered
the domain name primarily for the purpose of selling same to the Complainant,
who is the owner of the service mark, for valuable consideration in excess of
his documented out-of-pocket costs directly related to the domain name. Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (N.A.F.,
Apr. 30, 2001); World Wrestling Federation Entertainment, Inc. v. Bosman,
D99-0001 (W.I.P.O. Jan. 14, 2000).
Thus, under all of these circumstances,
the Panel finds that Respondent’s domain name has been registered and is being
used in bad faith. ICANN Policy ¶
4(a)(iii).
Having
established all three (3) elements required under ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ktvo.com> domain name be TRANSFERRED from Respondent to
Complainant.
M. Kelly Tillery,
Esq., Panelist
Dated: April 23, 2003
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