WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting, Inc. v. Gaddoor Saidi
Case No. D2000-0243
1. The Parties
1.1 The Complainant is CBS Broadcasting, Inc., a corporation organized under the laws of the State of New York, United States of America, having its principal place of business at 51 West 52nd Street, New York, New York, United States of America.
1.2 The Respondent is Gaddoor Saidi, an individual having a business address of P. O. Box 5168, Anaheim, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <cbs.org>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 31, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated April 6, 2000.
3.2 On April 6, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On April 7, 2000, NSI confirmed by reply e-mail that the domain name <cbs.org> is registered with NSI, is currently in active status, and that the Respondent, Gaddoor Saidi, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on April 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 29, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. That email address was incorrect, and, accordingly, the email notification was returned to the WIPO Center. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 On April 25, 2000, the Center received a communication by email from the Respondent in the above case requesting an extension of the deadline for the filing of the response. On April 27, 2000, the Center granted an extension of two weeks in which to respond to the Complaint, or until May 13, 2000. A response was received on May 9, 2000.
3.7 On May 17, 2000, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was May 31, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
3.8 Complainant filed a reply and Respondent a rebuttal to the reply. Neither pleading is provided for the Uniform Rules. Neither party requested permission from the Panel to file further statements pursuant to Rule 12. Accordingly, the Panel will not consider either of these filings. J.P. Morgan v. Resource Marketing, ICANN Case No. D2000-0035.
4. Factual Background
4.1 Complainant registered the service mark "CBS" in connection with radio and television broadcasting services with the United States Patent Office ("USPTO") on July 9, 1968, for a period of 20 years, and renewed the application for an additional 20-year period on July 9, 1988.
4.2 Complainant has used the CBS mark in connection with broadcasting services since at least October 15, 1933.
4.3 Complainant has, over a period of some sixty-five years, expended substantial sums of money advertising and promoting its services under the CBS mark.
4.4 On November 15, 1997, Respondent registered the domain name <cbs.org>.
4.5 To date, Respondent has not used the domain name to develop a web site.
4.6 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. In reply, Respondent offered to transfer the domain name to CBS for "a minimum total" of $114,000.
4.7 Other entities have registered marks which contain the element "CBS."
4.8 Several other entities that either utilize "cbs" in their names or whose initials are "cbs" have registered in gTLD's or ccTLD's domain names which incorporate the letter sequence "cbs" in the domain name.
4.9 Respondent is in the business of conducting group tours to the holy land under the dba "Makkah Tours" and is a partner in a corporation called "Dar El-Eiman For Hajj and Umrah, Inc." Respondent operates a web site at www.Hajjtour.com.
4.10 On July 15, 1999, Complainant sent NSI a letter requesting that the domain name at issue be placed on hold.
4.11 Sometime after the receipt of that letter, NSI placed the domain name at issue on hold.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent concedes that the domain name at issue is identical to the service mark registered and used by the Complainant. Respondent contends that he has rights or legitimate interest in respect of the domain name at issue and that he did not register, nor is he using, the domain name in bad faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and used in bad faith.
6.4 It is clear that the domain name at issue <cbs.org> is identical to the service mark in which the Complainant has rights.
6.5 Respondent contends that he intends to use <cbs.org> in conjunction with his business, but he has been unable to because NSI has put the name on hold. However, Respondent offers no explanation as to why he made no use of the name between its registration in November, 1997, and the time on which the name was put on hold, sometime after July 15, 1999.
6.6 In an email to Complainant, Respondent estimated that his actual expenditure in respect of the domain name to be around $14,000 and that a professional Internet consultant had conservatively estimated his "loss of opportunity to use the disputed domain name in my venture" in the range of $100,000 - $300,000. From this he derived his "minimum total" of $114,000 to sell the domain name to Complainant.
6.7 The Panel rejects the argument set out in the dissenting opinion in Motorola, Inc. v. Newgate Internet, Inc., ICANN Case No. D2000-0079, that offers made in the context of settlement discussion should be barred from evidentiary consideration on the basis of United States Federal Rules of Evidence Rule 408. Such an application of the Federal Rules of Evidence, Rule 408 is flawed. The express purpose of Rule 408 is to prohibit an offer of compromise as evidence of liability. Thus the mere fact that one offered to settle a matter by the payment of money should not be used as an admission of liability.
6.8 Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been registered and is being used in bad faith. Policy, ¶ 4(b)(i). The only exception to this is where the Respondent can show that it has rights to or legitimate interests in the domain name at issue. Avnet, Inc. v. Aviation Network, Inc., ICANN Case No. D2000-0046.
6.9 Respondent has gone to great lengths to show that there exist third parties who may be able to demonstrate that they have rights to or legitimate interests in respect of the domain name at issue. Unfortunately, even if those third parties could make such a showing, it would be of no aid to Respondent under the Policy. Paragraph 4(c) instructs the Respondent on "how to demonstrate your rights to and legitimate interests in the domain name" (emphasis added). The examples which follow all deal with actions taken by or relate to the status of the Respondent. None deals with third parties. The fact that some third party may be able to successfully defend against a complaint had that third party registered the domain name at issue, even if true, does not avail Respondent.
6.10 Respondent has made no showing that he has rights to or legitimate interests in respect of <cbs.org>.
6.11 Therefore, Respondent's offer to sell the domain name at issue for valuable consideration in excess of his out-of-pocket costs constitutes evidence of bad faith registration and use. World Wrestling Federation v. Bosman, ICANN Case No. D99-0001.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the service mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <cbs.org> be transferred to the Complainant.
M. Scott Donahey
Dated: June 2, 2000