WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CBS Broadcasting Inc. v. Bert Groves

Case No. D2000-0254

 

1. The Parties

Complainant is CBS Broadcasting Inc., a New York corporation with its principal place of business at 51 West 52nd Street, New York, New York 10019, U.S.A. (CBS). Respondent is Bert Groves, with an address at 3120 Arbutus Lane, Marrero, LA 70072, U.S.A. (Groves).

 

2. Domain Name and Registrar

The domain name in issue is "CBSWWW.COM". The registrar is Network Solutions, Inc.

 

3. Procedural History

On April 3, 2000, CBS transmitted a copy of CBSís complaint to Groves by certified mail, postage-prepaid (complaint, Paragraph 16).

The WIPO Arbitration and Mediation Center (the Center) received CBSís complaint on April 4, 2000 (electronic version) and on April 7 (hard copy version). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). CBS made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 11, 2000.

The complaint (Paragraph 6) identifies Respondent as Bert Groves at the above address, and the administrative contact also as Bert Groves at the above address, but adding a telephone number (504 841 9890) and an email address (BertGroves@netzero.net).

On April 7, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On April 10, 2000, Network Solutions transmitted via email to the Center Network Solutionsí Verification Response, confirming (a) the registrant is Groves, (b) the administrative contact is Groves, (c) "Network Solutionsí 5.0 Service Agreement is in effect," and (d) "The domain name CBSWWW.COM is in ĎActiveí status."

On April 11, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint via post/courier and email to:

Mr. Bert Groves
3120 Arbutus Lane
Marrero, LA 70072
U.S.A.

E-Mail: postmaster@cbswww.com
bertgroves@netzero.net

The Notification (a) stated that the Policy "is incorporated by reference into your Registration Agreement ... pursuant to which you are required to submit to and participate in a mandatory administrative proceeding", and (b) set out inter alia the circumstances under which this proceeding commenced, the requirements for communicating with the Center and CBS, the last day for sending "your Response to the Complainant and to us is April 30, 2000," and the consequences of Grovesís being in default. In addition, the enclosed Complaint (Paragraph 10) and the Complaint Transmittal Cover Sheet both advised Groves that the Policy is incorporated by reference into Grovesí Registration Agreement. A copy of the Policy was annexed to the Complaint as Exhibit B.

On May 1, 2000, the Center transmitted Notification of Respondent Default via post/courier and email to:

Mr. Bert Groves
3120 Arbutus Lane
Marrero, LA 70072
U.S.A.

E-Mail: postmaster@cbswww.com
bertgroves@netzero.net

On May 2, 2000, the Center advised the parties via email, and Groves also by post/courier, that David W. Plant, Esq. had been appointed as the panelist in this proceeding.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The complaint is based (Paragraph 12) on two service marks, registered in the U.S. Patent and Trademark Office pursuant to two registrations, copies of which appear at Exhibit C to the complaint, viz.:

CBS Reg. No. 852,481 July 9, 1968 1
CBS and eye Reg. No. 777,750 September 22, 1964.

The complaint alleges (Paragraph 12, page 5) that CBS has used "the CBS mark" since at least 1933, and CBS is the owner of the two "valid, subsisting and existing" service mark registrations.

b. The Complaint

The grounds for the complaint are:

Paragraph 12, page 5 -- Over the past 65 years, CBS has spent "a substantial sum of money" advertising and promoting its services under "the CBS mark," which has created "a great deal of goodwill and popularity for the CBS mark."

Paragraph 12, page 6 -- CBS also has a "strong presence" on the Internet, through its ownership interest in at least five websites that include the term "CBS", viz.: CBS.COM, CBSNEWS.COM, CBS.SPORTSLINE.COM, CBS.MARKETWATCH.COM, and CBS.HEALTHWATCH.COM.

Paragraph 12, page 6 -- CBS has used the CBS mark in marketing, promoting and selling a wide variety of merchandise in stores and "over the Internet on the CBS.COM website," for which CBS has received "significant revenues."

Paragraph 12, page 6 -- As a result of CBSís activities "the CBS mark" has achieved wide recognition, the public has come to associate "the CBS mark" with services originating from or approved by CBS, "the CBS mark" has become an extremely valuable symbol of CBS with "substantial commercial magnetism," and has become a "famous mark."

Paragraph 12, page 6 -- Grovesís domain name CBSWWW.COM, registered May 20, 1999, is "identical or confusingly similar to the mark CBS."

Paragraph 12, page 7 -- Groves registered the domain name in bad faith and has no rights or legitimate interests in the domain name.

Paragraph 12, page 7 -- Groves is not commonly known by the name CBS or CBSWWW.COM.

Paragraph 12, page 7 -- Grovesís bad faith is confirmed because Groves failed to develop a Web site at this domain name and has failed to make any other good faith use of the domain name.

Paragraph 12, page 7 -- CBS sent a letter to Groves advising him that his registration of the domain name CBSWWW.COM constituted "a violation of CBSís right in the CBS mark" and requesting that Groves transfer the domain name to CBS. CBS received no response to this letter.

In its complaint, CBS requests that the CBSWWW.COM domain name be transferred to CBS.

c. The Response

Groves has not responded to the complaint or to any other communication from the Center in this proceeding.

 

5. Discussion and Findings

Paragraph 4.a. of the Policy directs that CBS must prove, with respect to each domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to the corresponding CBS mark, and

(ii) Groves 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.

Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.a.(ii) above.

a. Identity or Confusing Similarity

Grovesís failure to respond to the complaint does not relieve CBS of its burden to prove this element, as well as the other two elements, set out in Paragraph 4.a. of the Policy. However, Grovesís failure to deny any of CBSís averments permits this panel to take CBSís averments as true and to draw appropriate inferences.

CBS urges (complaint, Paragraph 12, page 7) the domain name CBSWWW.COM is "identical or confusingly similar to the CBS mark." Thus, CBS must prove either identity or confusing similarity between the domain name in issue and a CBS service mark. (For purposes of this decision, we need only consider the CBS service mark that is the subject of U. S. Registration No.852,481.)

The significant portion, i.e. CBS, of the domain name CBSWWW.COM is identical to the CBS service mark.

Moreover, on its face, the CBSWWW.COM domain name is for purposes of this dispute confusingly similar to the CBS service mark. The domain name in issue identifies a Web site that the ordinary consumer would likely believe was operated or sponsored by CBS or otherwise affiliated with CBS. This is especially true in light of the well-known nature of the CBS mark and CBSís operation of, or affiliation with, at least five Web sites that incorporate the CBS mark in each of their domain names. Accordingly, the ordinary consumer would likely believe that whatever services or information are provided at the CBSWWW.COM Web site are provided by or with the approval of CBS.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) validity of the CBS service marks, (2) CBSís rights in those marks with respect to CBSís services, (3) the goodwill associated with those marks, or (4) any fact averred by CBS as to CBSís use of the marks, promotion of the marks, sales of services and goods under the marks, and the value of the marks to CBS.

Nor has any challenge been leveled with respect to CBSís averments (complaint, Paragraph 12, page 7) (1) "Groves is not (either as a business or other organization) commonly known by the name CBS or CBSWWW.COM," and (2) "Groves has failed to develop a Web site at this domain name and has failed to make any other good-faith use of the domain name."

In light of the record here, it is clear that Groves has no rights or legitimate interest in CBSWWW.COM.

c. Bad Faith

Registration and use of the domain name in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. CBS must prove both registration in bad faith and use in bad faith.

CBS avers (complaint, Paragraph 12, page 7) (a) Groves registered the domain name in bad faith and (b) Grovesís bad faith is confirmed because Groves has failed to develop a Web site at this domain name and has failed to make any other good faith use of the domain name. CBSís averments of bad faith relate to both registration and use.

CBSís averments stand unchallenged. They are buttressed by Grovesí failure to offer services at the Web site 2. It is fair to infer that Groves acquired the domain name in issue primarily for the purpose of selling the domain name registration for a profit and not for the purpose of assisting CBS in acquiring or developing Web sites utilizing the CBS mark..

d. Paragraph 4.c. Factors

With respect to each domain name in issue, Groves has failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:

(i) before any notice by CBS to Groves of the dispute, Respondentís use of or preparations to use the domain name was in connection with a bona fide offering of goods or services -- indeed, CBS avers that Groves has failed to develop a Web site and has filed to make any other good faith use of the domain name,

(ii) Groves or a related entity has been commonly known by the domain name Ė CBS avers that the contrary is the case, and

(iii) Groves is making legitimate noncommercial or fair use of the domain name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" -- from the uncontested averments of CBS, it is fair to infer that none of these circumstances applies to Groves.

 

6. Decision

The panel has jurisdiction of this dispute. Groves has received notice of the commencement of this proceeding, the Policy, the complaint, Grovesís default, and the consequences Grovesís default.

In light of the foregoing, the Panel decides that (a) the domain name CBSWWW.COM registered by Groves and in issue here is confusingly similar to the corresponding service marks of CBS, (b) Groves has no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used in bad faith by Groves.

Accordingly, the Panel requires that the registration of the CBSWWW.COM domain name be transferred to CBS.

 


 

David W. Plant
Presiding Panelist

May 8, 2000


Footnotes:

1. The complaint refers to July 31, 1967, as the registration date. This was the date of filing the application for registration.

2. The Centerís 9/04/00 URL printout shows that as of that date Groves was offering CBSWWW.COM for sale, viz.: "Anyone interested in buying this domain should contact me at my e-mail address at BERTGROVES@NETZERO.NET."