GOL TV, Inc. v. Onyx Domain Solutions
Claim Number: FA0703000944251
Complainant is GOL TV, Inc. (“Complainant”), represented by Michael
C. Cesarano, of Feldman Gale, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goltv.com>, registered with Enom, Inc.
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.
Diane Cabell, Jeffrey Mausner and Alan L. Limbury as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On March 21, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <goltv.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 29, 2007, the National Arbitration Forum drew to Complainant’s attention certain formal deficiencies in the Complaint. On April 2, 2007, Complainant submitted a Revised Complaint in accordance with the Policy.
On April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2007 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 firstname.lastname@example.org by e-mail.
The National Arbitration Forum received a copy of the Response electronically on April 24, 2007, but did not receive a hard copy until April 26, 2007, after the deadline for Response. On April 27, 2007, Respondent submitted an amended Response in both electronic and hard copy format. As these submissions were received after the deadline for Response, the National Arbitration Forum considers the Response to be deficient according to its Supplemental Rule 5(a). Nevertheless, given that the initial Response was filed electronically within time and in the interests of ensuring that each party is given a fair opportunity to present its case, the Panel has taken the amended Response into account in the exercise of its general powers under Rule 10 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”).
A timely Additional Submission was received from Complainant on May 1, 2007 and determined to be complete according to Supplemental Rule 7.
On May 2, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Jeffrey Mausner and Alan L. Limbury as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that since February 2003 it has been using the trademark ‘GOLTV and design’ in connection with a cable-network TV channel business which broadcasts sports-related programs including more than 1,500 soccer games per year to more than 65 million viewers. The word “gol” translates as “goal” in English.
On May 17, 2005,
Complainant became the registrant of
On January 25,
2005, Complainant became the registrant of
Complainant is also the registrant of the domain name <goltv.tv>, which it uses to promote its TV channel business.
Complainant says the disputed domain name <goltv.com> is identical and confusingly similar to Complainant’s registered mark GOLTV and its <goltv.tv> domain name. Complainant has not licensed or otherwise permitted Respondent to use that mark in the disputed domain name. Respondent cannot show that it was commonly known by the name "goltv." Its website is merely a link to a home page where Respondent posts advertisements, including ads relating to soccer, to make money until the domain name is sold. Respondent is capitalizing on Complainant's trademark rights.
Complainant says Respondent’s domain name should be considered as having been registered and used in bad faith because, by using a domain name that is nearly identical to Complainant's registered mark to sell advertising related to soccer, Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website or of products or services offered through its website. Further, Complainant says Respondent is using the domain name primarily for the purpose of disrupting the business of Complainant.
Respondent alleges that “GOLTV” stands for “Global Online Television” and that the disputed domain name <goltv.com> was registered on January 5, 2000 with the purpose of aggregating links and media around the concept of “Global Online Television.” This domain name is one of approximately 3500 “Global,” ”Global Online” and ”GOL” domain names registered by or on behalf of Global Online, Inc., a company founded in 1993 by Dr. Christopher Hartnett. Global Online, Inc. was a pioneer in Internet-related services, serving as one of the world’s first international web-based meta-hub portals on the Internet with over 5860 separate and distinct websites. It has marketed the initials “GOL” as the abbreviation for “Global Online.”
Because of the large number of domain names under registration, approximately seven years ago Global Online, Inc. retained Respondent, Onyx Domain Solutions, Inc., to service and manage its portfolio, including the disputed domain name.
Respondent relies on the facts that, according to the Complaint, Complainant began its cable television service focused on soccer entertainment in approximately February 2003 and registered the domain name <goltv.tv> on March 2, 2002. Respondent submits that this sequence of events makes four things absolutely clear:
· When Global Online, Inc. registered the disputed domain name on January 5, 2000, it had no knowledge of Complainant or any cable channel operating under the name “GOL TV,” since it did not exist at that time.
· When Complainant launched its soccer cable television business and selected its own domain name in the .tv top-level domain, it was aware of the prior registration of Global Online, Inc.
· When Complainant applied for a trademark registration on May 2, 2002, it was aware of the prior domain name registration of Global Online, Inc.
· When Complainant first used the phrase “GOL TV” in commerce on February 28, 2003, it was aware of the prior registration of Global Online, Inc.
Respondent submits it is likely Complainant attempted to register the disputed domain name and learned that it was unavailable. Even if .tv was its first choice of a domain name, this Panel can attribute Complainant with constructive knowledge of the prior registration of the disputed domain name, which would have been apparent to anyone who wished to look for it in the Whois database.
Respondent says that neither Dr. Hartnett nor Mr. Heflin, the owner of Respondent, were aware of any third-party interest in the disputed domain name until counsel for Complainant attempted to purchase it on behalf of a client. Each offer was declined. Counsel for Complainant initiated the offers and solicited Respondent to sell the name, yet these details were omitted from the Complaint.
Respondent says it registered the disputed domain name at least two years before Complainant started its business. With no possible knowledge, actual or constructive, of Complainant’s business, its yet-to-be-applied-for service mark registration, or its yet-to-be-registered .tv domain name registration, Respondent could not possibly have registered the disputed domain name in bad faith.
The only evidence offered by Complainant on the issue of bad faith is the suggestion that Global Online, Inc. and Respondent placed links to soccer-related advertisements on the website at the <goltv.com> domain name. Respondent replied that from time to time, it uses a third-party advertising service to serve content-related advertisements as a means of defraying the costs of maintaining Global Online, Inc.’s websites and services. That content is selected by the service provider, not by Respondent or Global Online, Inc. As soon as Mr. Heflin received the Complaint (Respondent’s first notice of this dispute), he instructed the third-party advertising service to stop serving any soccer-related links. This prompt response establishes the good faith of Respondent.
Respondent says Complainant knowingly started its business with a domain name unavailable in .COM. This Complaint was brought only after Complainant attempted to buy the domain name and was rebuffed. That attempt was made by the very attorney representing Complainant here, but the details of the offer and the response are not mentioned in the Complaint. This omission lays bare the real intention of Complainant: to purloin through the Policy process what it could not purchase in the marketplace. This is reverse domain name hijacking.
C. Additional Submissions
Complainant sets out a chronology of events based on archived material which, it contends, demonstrates Respondent’s bad faith registration and use, as per paragraph 4(b)(iv) of the Policy. That chronology begins on May 6, 2001. It shows the website at the disputed domain name being used as a global television portal; as later advertising the disputed domain name for sale; and between December 18, 2005 and March 6, 2006 (the last date for which archived images are available) as using the title “SOCCER” and including pictures of soccer players in action and other sports-related material.
Complainant says this shows that Respondent did not commence use of the
disputed domain name for soccer and/or sports programming until nearly one year
after the registration of Complainant’s trademarks and nearly two years after
Complainant began broadcasting soccer games throughout the
Complainant says Respondent cannot justify allowing the disputed domain name to be used in a manner so as to infringe Complainant’s trademark rights, as it did from at least December 18, 2005 until the filing of the Complaint, simply by stating that Respondent gave a third party the unfettered right to place banner advertisements on the site. Whether or not Respondent actually knew or should have known of Complainant’s trademark rights, Respondent’s refusal to sell the disputed domain name to Complainant, coupled with its deliberate use of the disputed domain name from December 2005 to March 2006 in connection with soccer and sports, further supports Complainant’s contention that the disputed domain name should be considered as having been registered and used in bad faith.
Complainant denies reverse domain name hijacking.
Complainant has failed to establish all the elements entitling it to relief.
Paragraph 15(a) of 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.
The majority of this Panel adopts the prevailing view that paragraph 4(a)(i) of the Policy embodies no requirement that a complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005) and the cases there cited; Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007); Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007). The consequences of a complainant’s trademark rights having arisen after the registration of the disputed domain name fall for consideration under paragraphs 4(a)(ii) and (iii) of the Policy. See, e.g., Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., D2004-0399 (WIPO Aug. 23, 2004); Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005).
Complainant clearly has rights in its two registered trademarks ‘GOLTV and design’ and ‘GOLTV.’
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO Jan. 29, 2001); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
The disputed domain name is clearly identical to Complainant’s GOLTV mark. Complainant has established this element of its case.
Respondent has provided declarations, signed under penalty of perjury, from Dr. Hartnett, the founder in 1993 of Global Online, Inc. and Mr. Heflin, founder and principal of Respondent.
The Panel accepts that, prior to any notice to Respondent of this dispute, and indeed prior to the start of Complainant’s business and the registration of its trademarks, the disputed domain name was used by Respondent in connection with a bona fide offering of services, in that the disputed domain name formed part of a portfolio of “Global Online” domain names advertised under the “GOL” brand by Global Online, Inc. in connection with the provision of Internet portals; and that, pursuant to an arrangement with Global Online, Inc., Mr. Heflin and Respondent supervised and managed that portfolio.
This demonstrates Respondent’s rights and legitimate interests in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. Complainant has failed to establish this element of its case.
Complainant did not start its soccer-related broadcasting business and did not begin to use its trademarks until after Respondent registered the disputed domain name.
In such circumstances bad faith registration has, on rare occasions, nevertheless been found where there is evidence that a respondent had knowledge, prior to registration of the disputed domain name, of the complainant or its business plans. See, e.g., SMS Demag AG v. Seung Gon, Kim, D2000-1434 (WIPO Jan. 19, 2001), Pharmacia & Upjohn AB v. Monsantopharmacia.com, D2000-0446 (WIPO Aug. 1, 2000) and eGalaxy Multimedia Inc v. T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001).
Here Complainant does not contend nor is there any evidence that Respondent was aware of the existence of Complainant when Respondent registered the disputed domain name. Since it is necessary for a complainant to establish bad faith registration (as well as bad faith use), this is fatal to Complainant’s case. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) and Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 16, 2000).
As the learned panelist put it in The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003):
The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant?
Complainant seeks however to rely on paragraph 4(b)(iv) of the Policy, asserting that Respondent’s use of the disputed domain name in connection with soccer after Complainant started its soccer-related business and after Complainant had acquired its trademark rights is use in bad faith and that, pursuant to paragraph 4(b)(iv) of the Policy, this also constitutes bad faith registration.
In considering this submission, the Panel has taken into account prior decisions in similar circumstances:
The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all the improper purposes mentioned can be accomplished merely by passively holding a domain name. The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name also have been registered in bad faith. This example thus appears to conflict with the rule set forth in paragraph 4(a)(iii).
Shirmax Retail Ltd./D¢etaillants Shirmax Lt¢ee v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000).
The panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii) and 4(b)(iv) by the contrast between the introductory words of paragraph 4(c): “any of the following circumstances …shall demonstrate your rights or legitimate interests” and the introductory words of paragraph 4(b): “the following circumstances…shall be evidence of the registration and use of a domain name in bad faith”.
This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith.
Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution June 9, 2000), followed in Viz Communications, Inc., v. Redsun, D2000-0905 (WIPO Dec. 22, 2000).
Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001), the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, D2000-0026 (WIPO May 9, 2000), the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would ‘extend the Policy to cover cases clearly intended to be outside its scope.’ Similarly, in Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO Mar. 5, 2000), the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.
Yoomedia Dating Ltd. v. Newcomer, D2004-1085 (WIPO Feb. 22, 2005).
Accordingly, and consistent with these prior decisions, even if the Panel were to assume that Respondent’s use of the disputed domain name for soccer-related advertisements after Complainant had established its business and registered its marks constituted bad faith use, the fact that the domain name was registered without knowledge of Complainant, before there was any such business and before there was any such mark, precludes any finding of bad faith registration in this case.
Complainant has failed to establish this element of its case.
Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001); or that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests. See Smart Design LLC v. Hughes, D2000‑0993 (WIPO Oct. 18, 2000); or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the complaint in bad faith. See Zuckerman v. Peeris, DBIZ2002-00245 (WIPO Aug. 12, 2002); HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., D2002-0754 (WIPO Nov. 27, 2002).
Not without some hesitation, the Panel is not satisfied that Complainant was conscious of the fatal weakness of its case when it brought the Complaint. Respondent’s soccer-related use of the disputed domain name afforded Complainant some reason to believe it could establish bad faith use. The language of paragraph 4(b)(iv) of the Policy might well have led Complainant mistakenly to believe it could establish bad faith registration in reliance on that paragraph.
Accordingly the Panel declines to make a finding of reverse domain name hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Presiding Panelist
Diane Cabell Jeffrey Mausner
Dated: May 14, 2007
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National Arbitration Forum
 Panelist Mausner is of the view that while Respondent does have rights and legitimate interests in the domain name for some services due to its prior registration and use of the domain name, it does not have rights or legitimate interests to use the domain name in connection with television broadcasting of sports, production of sports television programs, and entertainment in the nature of ongoing television programs in the field of sports. Complainant registered service marks and commenced use of the mark for those services prior to Respondent’s use of the domain name in those fields.
 Panelist Mausner is of the view that use of the domain name in connection with any of the services for which Complainant has obtained service mark registration, set forth in footnote 1, would most likely constitute use in bad faith. However, such use would not establish registration in bad faith, since Respondent’s registration of the domain name preceded Complainant’s trademark rights. If Respondent or a transferee of the domain name were to use it in the future in a manner that is likely to cause confusion with Complainant’s service marks, Complainant could bring an action for trademark infringement in the appropriate court.