DECISION

 

Good News Communications v. H.L. Burnside a/k/a Kingston

Claim Number: FA0107000098080

 

PARTIES

Complainant is Good News Communications, Inc, Camarillo, CA (“Complainant”) represented by Charles G. Smith, of Towle, Denison, Smith & Tavera, LLP.  Respondent is H.L. Burnside a/k/a Kingston , Harriman, NY (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <movieguide.tv>, registered with The .TV Corporation.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 18, 2001; the Forum received a hard copy of the Complaint on July 23, 2001.

 

On July 20, 2001, The .TV Corporation confirmed by e-mail to the Forum that the domain name <movieguide.tv> is registered with The .TV Corporation and that Respondent is the current registrant of the name.  The .TV Corporation has verified that Respondent is bound by the The .TV Corporation 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 July 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 15, 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@movieguide.tv by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

1.      the <movieguide.tv> domain name is identical to Complainant's federally registered trademark MOVIEGUIDE;

2.      Respondent has no rights or legitimate interests in the <movieguide.tv> domain name; and

3.      Respondent registered and is using the <movieguide.tv> domain name in bad faith.

 

B. Respondent

No Response was submitted.

 

FINDINGS

1.      Complainant has used the trademark MOVIEGUIDE in connection with its publications that rate movies and videos "in accordance with a biblical worldview." 

2.      Complainant has used its MOVIEGUIDE trademark since as early as 1985.

3.      Complainant registered the trademark MOVIEGUIDE with the United States Patent and Trademark Office under the Principal Register Registration No. 1,741,219 on December 22, 1992.

4.      Respondent registered the <movieguide.tv> domain name on June 14, 2000.

5.      Respondent has placed the <movieguide.tv> domain name up for sale on a public auction site

6.      At the time of the Complaint, the asking price was $4,000.

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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

Complainant's rights to the MOVIEGUIDE trademark are firmly established by its federal registration.  The <movieguide.tv> domain name is plainly identical to Complainant's MOVIEGUIDE trademark in that the domain name is simply a combination of Complainant's entire trademark and a TLD.  E.g., Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

By not submitting a response, Respondent fails to dispute Complainant's assertions that Respondent lacks rights and legitimate interests in the <movieguide.tv> domain name.  The Panel is permitted to accept Complainant's assertions.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that based on the Respondent’s failure to respond, the Panel draws two inferences: (1) that the Respondent does not deny the facts asserted by the Complainant, and (2) the Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

 

 

Additionally, Respondent's lack of response does not provide this Panel with any evidence to demonstrate that Respondent meets any of the criteria set forth under Policy ¶ 4(c) to show rights or legitimate interests in a disputed domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent registered the <movieguide.tv> domain name despite Complainant's registered trademark MOVIEGUIDE.  Registration of a domain name that is identical to another party's registered trademark constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii).  Cf. Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

 

Additionally, Respondent is offering the <movieguide.tv> domain name up for sale on a public auction website with an asking price well over any registration related expenses.  It is well settled that such conduct amounts to bad faith registration and use within the meaning of Policy ¶ 4(b)(i).  E.g., Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.

 

Accordingly, it is Ordered that the <movieguide.tv> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: August 23, 2001