DECISION

National Cable Satellite Corporation v Gearwood.com

Claim Number: FA0012000096194

PARTIES

The Complainant is National Cable Satellite Corporation, Washington, DC, USA ("Complainant"). The Respondent is Gearwood.com, Fredericktown, MO, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are "cspan2.org", "c-span2.org", "cspan2.com", registered with Network Solutions, Inc.

PANELIST

The undersigned certifies that he has acted independent and impartially and, to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on December 4, 2000; The Forum received a hard copy of the Complaint on December 6, 2000.

On December 8, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that domain names "cspan2.org", "c-span2.org" and "cspan2.com are 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. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@cspan2.org, c-span2.org, cspan2.com by e-mail.

On December 28, 2000, pursuant to the Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

RELIEF SOUGHT

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

PARTIESí CONTENTIONS

Complainant owns and operates C-SPAN, C-SPAN2 and C-SPAN3, nationally known producers of public affairs television distributed by cable television and satellite. "C-SPAN" is an acronym for "Cable Satellite Public Affairs Network." C-SPAN2 provides gavel-to-gavel coverage of the United States Senate. When the Senate is not in session, primarily during the weekend, C-SPAN2 distributes programming under the title "Book TV" related to books, authors and publishing.

Complainant has utilized the service mark C-SPAN2 since 1986. The U.S. Patent and Trademark Office registered the mark on July 15, 1997 (Reg. No. 2,079,332) (the "Mark"). Complainant also has registered the service marks C-SPAN (Reg. No. 2,081,620) and C-SPAN3 (Reg. No. 2,081,632). Complainant registered the domain name C-SPAN.ORG in October 1993 and has used it since that time. It registered the domain name C-SPAN2.COM in January 2000.

GearWood.com registered the domain names CSPAN2.COM, CSPAN2.ORG and C-SPAN2.ORG in December 1999. All three Domain Names take the user to the same website. The websiteís text states that it was intended to serve independent publishers and publications by providing a means to sell books and search for online related material. The website is hyperlinked to Amazon. com, www.amazon.com.

Amazon.com has a permissive "Associates Program" that permits a person to link his or her website to Amazon.comís site and earn commissions on the sale of products resulting from the line. A user who links to Amazon.comís site through the website has full access to all of Amazon.comís products. The user who goes directly to the site using the Domain Names also has access to all products.

On January 12, 2000 and November 10, 2000, Complainant contacted James Gebert, the billing contact for GearWood.com, by telephone and letter and requested that GearWood.com transfer the domain names CSPAN2.COM and CSPAN2.ORG to Complainant and offered to handle the transfer and pay associated costs. Mr. Gebert refused to transfer the domain names and did not offer to sell the domain names to Complainant.

MATERIALS REVIEWED

Complainantís Complaint and Respondentís Response.

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."

Section 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:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Section 4(b) provides:

Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondentís] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the Respondentís] web site or location or of a product or service on [the Respondentís] web site or location.

The Complainant bears the burden of proof on these issues.

IDENTICAL AND/OR CONFUSINGLY SIMILAR

Here, the domain names are identical to the Mark. The Markís having a space between "CSPAN" and "2" does not deprive it of similarity with the domain names.

RIGHTS OR LEGITIMATE INTERESTS

As to the second element of Section 4(a), Respondentís registration of the domain names could be said to afford it rights in the name. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A "right" bespeaks of a legal entitlement such as a mark. An "interest" is something less. It could be found in good faith use of a name or generic term as a link to another web site truly offering goods and services, significant promotional expenses with respect to a name or generic term or an established use of the name term prior to registration.

Here, the Respondent has developed the site to provide goods and services. There appears to be no legitimate reason, however, for use of a well-known name. Respondentís contention that its service is a span from one site to another is ingenious, but does not explain the use of the "C" or "2". Thus, it appears that Respondent has no legitimate interest in the domain names.

REGISTRATION AND USE IN BAD FAITH

Here, Rule 4(d)(iv) applies. The use of "CSPAN2" indicates an intention to attract users to the site through confusion with Complainantís Mark as to the affiliation of the site, and also relates to Complainantís "Book TV" programming. That Respondent has recently changed the site to state an absence of such affiliation and to provide a link to CSPAN2.com is given no weight given that it occurred after Complainantsí second letter to Respondent and as the Complaint was being filed.

I have previously held that similar attempts made after receipt of a letter from Complainant and the filing of a Complaint does not contradict the bad faith in registering and use of a domain name in violation of one of the sub-sections of Rule 4(b). See Distinctive Designs Intíl, Inc. v. distinctivedesigns.com, FA 95478 (Nat. Arb. Forum Oct. 5, 2000); Methodist Urology, LLC v. Urology of Indiana, FA 95609 (Nat. Arb. Forum Oct. 17, 2000).

DECISION

It is decided that Network Solutions, Inc. should transfer the domain names to Complainant.

 

Honorable Howard C. Buschman, II

U.S. Bankruptcy Judge (Ret.)

Arbitrator

Dated: January 8, 2001