WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CBS Broadcasting Inc .v. VanityMail Services Inc

Case No. D2000-0379

 

1. The Parties

The Complainant is CBS Broadcasting Inc., a New York Corporation of 51 West 52nd Street, New York, NY 10019, United States of America.

The Respondent is VanityMail Services Inc, a Turks & Caicos Island Corporation with its registered office at c/o International Company Services Ltd., Sovereign House, Station Road, St. John, Isle of Man IM4 3AH, United Kingdom. The Respondent also appears to have an address at 641 1551 Salisbury Avenue, Port Coquitiam, British Columbia, V3D 7H9, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is:
48hours.com

and the Registrar is:
Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on May 4, 2000 [electronic version] and on May 5, 2000 [hard copy]. 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]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is May 17, 2000.

On May 15, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on May 16, 2000 Network Solutions, Inc transmitted via email to the Center Network Solutionsí verification response confirming that the registrant is VanityMail Services Inc and the contact for both administrative and billing purposes is David Milligan.

Having verified that Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 17, 2000 to www.48hours.com, dave@milligan.com and nowcomputers@yours.com the Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by June 5, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:

VanityMail Services Inc
Box 42013
Vancouver
British Colombia V5S 4R5
Canada

to

David Milligan
VanityMail Services Inc
641 1551 Salisbury Ave
Port Coquitiam
British Columbia V3B 6H9
Canada

and to

Dan Hunter of New Computer Productions at the same address.

On June 10, 2000 the documents sent by mail to the Respondent at Box 42013, Vancouver aforesaid were returned to the Center marked "moved". The 3 emails were not able to be delivered, since the URL could not be retrieved.

On June 5, 2000 the Respondentís attorneys advised the Center that the Complaint in hard copy had not been received by the Respondent until May 25, 3000 and that no other notification was received by any other means. The Respondent requested 20 days from May 25, 2000 for service of its Response [Rules para. 5(a)]. However, later on June 5, 2000 the Respondentís attorneys transmitted what they described as the Respondentís Initial Response. That Initial Response was received by the Center on June 6, 2000.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

The Complainant objected to the Respondentís request for further time for service of Response on the basis that the Respondent should have, but did not, notify any change of address from the Vancouver Box Number to its Isle of Man registered office to Network Solutions, Inc. in breach of its Registration Agreement. The Complainantís said objection of June 7, 2000 in fact addresses more than the Centerís invitation to the Complainant to submit its comments on the Respondentís request for further time. The Complainantís communication of June 7, 2000 is, in effect, a Supplementary Complaint.

On June 7, 2000 the Respondent submitted an Amended Response, which comprises an 11 pages Business Profile [identified as Schedule 13(F)] of 48 Hours Yacht Services utilization of the domain name at issue.

Also on June 7, 2000 the Respondent replied to the Complainantís Supplementary Complaint made earlier that day. The Respondent explained that the original mailing address at Box 42013, Vancouver, BC V5S 4R5 notified to Network Solutions, Inc had been changed to 641-1551 Salisbury Avenue, Port Coquitiam, British Columbia, V3B 6H9 and the Notification of Complaint had been received at that address on May 25, 2000. The Panel is satisfied that, in the circumstances of this case, the Respondentís failure to notify this change of address is not such as to disentitle the Respondent additional time for its Responses. In fact, the Panel finds that the Initial Response was submitted in due time (see below).

The Respondentís communication of June 7, 2000 also replies to the Complainantís Supplementary Complaint insofar as the Supplementary Complaint also dealt with the substantive issues in this case.

The Panel finds that the Response was submitted by the Respondent within the 20 days prescribed by para. 2(a) of the Rules.

With regard to the Amended Response of June 7, 2000 the Panel is given discretionary powers to conduct the administrative proceeding in such manner as it considers appropriate within the Policy and the Rules and the Panel shall ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its case [Rules para. 10(a) and (b)]. In this case, amendment of the Response on June 7, 2000 has not delayed this administrative proceeding and the Panel rules that it shall be admitted.

The Complainantís Supplementary Complaint and the Respondentís reply - both of June 7, 2000 - are also admitted by the Panel. The function of the Panel is to do justice between the parties. In this case, there clearly was no deliberate attempt by the Respondent either to evade the Centerís jurisdiction or to delay this administrative proceeding.

Having received on June 13, 2000 Mr. David Perkinsí Declaration of Impartiality and Independence and his Statement of Acceptance the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was June 30, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

In the light of the foregoing, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Amended Response, the Supplementary Complaint, the Respondentís Response to that Supplementary Complaint, the Policy, the Rules and the Supplementary Rules.

 

4. Factual background

The Complainant

The Complainant, CBS Broadcasting Inc is the well known United States based broadcaster and has used the CBS mark in connection with its broadcasting services since at least October 1933.

Since at least January 1988 the Complainant has used its 48 HOURS mark in connection with its 48 HOURS television news program service. In the 12-year period since 1988 the Complainant claims to have spent a substantial sum of money advertising and promoting its services under the 48 HOURS mark. It has also, apparently, used the 48 HOURS mark in connection with the marketing, promotion and sale of various merchandise items, including T-shirts and mugs, which are offered for sale in CBS stores located in Los Angeles and New York as well as through its CBS.COM website.

The Complainant is also the registered proprietor of US service mark 48 HOURS and device in Class 41 for "television news program services". The application for the mark was filed on August 17, 1992 and the mark was registered on January 4, 1994. The device comprises a drawing of a television camera bearing the words "CBS NEWS" and below the word mark 48 HOURS in stylized form is contained within a parallelogram frame. Exclusive right to the word "News" is disclaimed apart from use as shown in the mark.

The Complainant claims that its long use, advertising and promotion of the 48 HOURS mark has achieved considerable public notoriety and is associated by the public with services originating with, emanating from, sponsored by or otherwise associated or approved by CBS.

The Respondent

The Respondent, VanityMail Services Inc, gives no information in relation to its activities, other than to point to its registration of the domain name in issue on May 1997 - almost 3 years before the Complaint in this case - and its intention to use the same in relation to the activities of 48 Hours Yacht Services Inc., a Dominican Republic based company with its headquarters in George Town, Grand Cayman Islands, British West Indies ["Yacht Services"]. Yacht Services is described as an agency providing yacht charters and yacht management services to individuals and corporations in the Caribbean area. Yacht Services is stated to have started as a yacht refit company in Vancouver, Canada in May 1999. The two prime movers of the company are David Milligan and Dan Hunter, whose names appear on the WHOIS entry in relation to the domain name in issue.

The objectives of Yacht Services are to become the premiere provider of yacht charter vacations for 25 to 35 year old professionals and to provide unsurpassed yacht management services for existing yacht refits and organization as well as becoming involved in the construction of new yachts. It is planned to provide these services through a website using the domain name in issue. These particulars appear from the Business Plan at Annex 13(F) to the Amended Response.

The Business Plan projects required funding of US$1M for Year One of the projected operation of Yacht Services, which funds are to be used in part (estimated at US$50,000) for website and database development. It does not appear that the website is yet in place.

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that the Respondent has registered as a domain name a mark which is identical to or is confusingly similar to the Complainantís 48 HOURS mark, that the Respondent has no rights or legitimate interests in respect of the domain name in issue and the Respondent has registered and its using that domain name in bad faith.

B. The Respondent

The Respondent does not appear to deny that the domain name in issue is identical with or its confusingly similar to the Complainantís 48 HOURS mark. However, the Respondent does assert that it has rights or legitimate interests in respect of the domain name in issue and that such domain was neither registered nor has it been used in bad faith.

 

6. Discussion and Findings

The Policy para. 4a provides that the Complainant must prove each of the following:

- that the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant asserts rights in the 48 HOURS mark. As explained in para. 4.3 above the Complainantís US registered Class 41 service mark is not for the word mark 48 HOURS simpliciter. The 48 HOURS mark forms a part only of the registered mark.

The Complainant has asserted 12 years use of the 48 HOURS mark but it is not clear from the Complaint whether such use is of the registered service mark or generally of the unregistered 48 HOURS mark or both. Given the notoriety of the Complainantís 48 HOURS television news program in the United States, the Panel will accept that it has rights in the unregistered 48 HOURS mark. The Panel takes the view that for the purposes of para. 4a(i) of the Policy, a service mark need not be a registered right [see, the Jeanette Winterson and Julia Roberts cases, respectively Cases D2000-0235 and D2000-0210.

The Panel finds that the domain name in issue is identical with rights which the Complainant has in the 48 HOURS (unregistered) mark. But, whether the Respondentís use of the domain name in issue infringes upon or otherwise infringes those rights is another matter (see, paras. 6.5 to 6.15 below). However, for the purposes of para. 4a(i) of the Policy, the Panel finds that that element has been proved by the Complainant.

Rights or Legitimate Interest

Para. 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondentsí rights or legitimate interest for the purpose of para. 4a(ii). Those circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use the domain name or domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has not acquired any trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.

From the background outlined in Section 4 above, demonstrably para. 4c(ii) and (iii) are not applicable to the facts of this case. The question is whether the Respondentís preparations to use the domain name at issue as set out in the Business Plan at Annex 13(F) to the Amended Response can be said to be in relation to a bona fide offering of goods or services.

The services in issue in this case are worlds apart. Broadcasting services and the sale of promotional type merchandise in the form of T-shirts and mugs by the Complainant. Yacht chartering and yacht management services by the Respondent. The Panel cannot believe that the Complainantís US registered service mark could be infringed by the proposed activities of Yacht Services. What then of its unregistered rights in the 48 HOURS mark? The Complainant states that it sent a letter to the Respondent advising that it is the owner of the 48 HOURS mark and that the Respondentís registration of the domain name in issue constituted a violation of the Complainantís rights in the 48 HOURS mark. The Complainant states that no reply was received to that letter.

By its Supplementary Complaint the Complainant asserts that failure to use a domain name in relation to a website until after the commencement of litigation undermines the Respondentís claim to be offering services in good faith. In support of that proposition the Complainant cited Sportyís Farms LLC .v. Sportsmanís Market Inc No. 98-7452, 2000 US App. LEXIS 1246 at 23-24 (2d. Cir. Feb. 2, 2000].

The Rules para. 15(a) entitled the Panel to have regard to any rules and principles of law that it deems applicable. Given the location of the Complainant in the United States and that of the Respondent in Canada, the Panel considers it appropriate to have regard to US case law cited by one of the parties. Further, in this case, the Panel has admitted the Respondentís reply to the Supplementary Complaint in which the Sportyís Farms case is cited, thereby giving the Respondent an opportunity to comment on the relevance of that case.

In fact, the Respondent did not so comment in its reply of June 7, 2000 to the Supplementary Complaint. The Respondent suggests that the 48 HOURS mark is somewhat too generic for it to provide the Complainant with rights outside broadcasting and suggests the impossibility of confusion arising between that business and the yacht chartering and management business of the Respondent proposed to be conducted on a website using the domain name in issue. The Respondent also points to the Complainantís delay in asserting claims in respect of the domain name in issue which was registered in May 1997 having regard to the fact that its US service mark was registered in January 1994.

The Sportyís Farm case related to use by Sportyís Farm of the internet domain name sportys.com in the context of Sportsmanís trademark SPORTYíS being a famous mark entitled to protection under the Federal Trademark Dilution Act 15 USC ß 1125(c) ["FDA"]. Held, inter alia, that use of the sportys.com to sell Christmas trees and by preventing Sportsmanís from using its trademark as an Internet domain name did dilute the SPORTYíS famous mark.

The Court found that since the 1960ís Sportsmanís had begun using the logo SPORTY to identify its catalogs and products. Sportsmanís is a mail order catalog company that is quite well-known among pilots and aviation enthusiasts for selling products tailored to their needs. In more recent years, it has expanded its catalog business well beyond the aviation market into that for tools and home accessories. The trial court rejected Sportsmanís claim of trademark infringement since the respective businesses were wholly unrelated and the criterion of "likelihood of consumer confusion" was not likely to develop. The court did, however, find for Sportsmanís under the FDA because Sportyís Farmís registration of the sportys.com domain name effectively precluded Sportsmanís ability to identify and distinguish its goods on the Internet by reference to its famous SPORTYíS mark.

The Appeal Court also considered the Anti Cybersquatting Consumer Protection Act ["ACPA"] which became law while the case was pending on appeal. The passage relating to bona fides upon the Complainant relies in the Supplementary Complaint arises in relation to the "bad faith intent to profit" requirement of the ACPA. The facts of the present dispute are, however, somewhat different in that here the Respondent maintains that it had its Business Plan for Yacht Services to use the domain name in issue for a yacht chartering/management website before the Complaint was made in May 2000. By contrast in the Sportyís Farm case, use of the domain name sportys.com for offering Christmas trees commenced only after the litigation began. The Policy para. 4c refers to preparations to use (emphasis added) the domain name in connection with a bona fide offering of goods or services.

The Appeal Court referred to the "unique circumstances" of the Sportyís Farm case. The District Court found that the individuals behind Sportyís Farm had deliberately registered the sportys.com domain name to prevent its use by Sportsmanís and for the purpose of entering into direct competition with Sportmanís in the pilot and aviation consumer market. The facts of the present dispute between the Complainant and the Respondent have no parallel to those in the Sportyís Farm case.

If the Complainant believes it has causes of action against the Respondent under the FDA and/or the ACPA, then the Complainant can assert those claims if it can show jurisdiction against the Respondent. The Policy prescribes different criteria to the Panelís understanding of those US Statutes. The Panelís job here is to consider whether the Complainantís rights in the 48 HOURS mark are such as to render the Respondentís preparations to use the domain name in issue mala fide.

This depends upon whether the Complainantís 48 HOURS mark has achieved such public notoriety that it is associated by the public with services originating with, emanating from, sponsored by or otherwise associated or approved by CBS. In all the circumstances, the Panel finds that the Respondent succeeds in demonstrating its rights or legitimate interest to the domain name for the purposes of para. 4a(ii) of the Policy and the Complaint, therefore, fails.

Bad Faith

Para. 4a(iii) o the Policy requires that the Respondentís domain name must both have been registered and be being used in bad faith. Both requirements must be met.

But, having regard to the Panelís finding in para. 6.16 above, it is unnecessary to decide whether the domain name in issue was registered and is being used in bad faith. However, the Complaint fails to establish either. On the evidence, the Complainant fails to satisfy any of the instances of registration and use in bad faith illustrated in para. 4b of the Policy.

 

7. Decision

For all the foregoing reasons, the Panel decides that the Complaint has failed to prove two of the three elements of para. 4a of the Policy. Accordingly, the Panel denies the request that registration of the domain name 48hours.com be transferred to the Complainant. Nothing in this Decision precludes the Complainant from taking such other action outside the Policy as may be available to it.

 


 

David Perkins
Sole Panelist

Dated: June 27, 2000