WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

N.C.P. Marketing Group, Inc. v. Entredomains

Case No. D2000-0387

 

1. The Parties

The Complainant is N.C.P. Marketing Group, Inc., a corporation organized in the State of Nevada, United States of America (USA), with place of business in Canton, Ohio, USA.

The Respondent is Entredomains, with place of business in Las Vegas, Nevada, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain names are "taebotv.com" and "tae-botv.com".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 4, 2000, and by courier mail received by WIPO on May 8, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 12, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc.

b) On May 12, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

c) On June 5, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and courier mail.

d) On June 15, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 15, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On June 19, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 3, 2000. On June 19, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has provided a copy (Complaint, Annex E) of its U.S. Patent and Trademark Office (USPTO) service mark registration dated March 11, 1997, for "TAE BO" (number 2,043,160 on the Principal Register), covering instructional teaching services for aerobics and martial arts. Complainant states that this service mark registration remains valid and subsisting. Complainant indicates that this service mark has and continues to be used in commerce. The validity of Complainantís service mark registration for "TAE BO" has not been contested by Respondent, and Complainantís use of the mark "TAE BO" has not been contested by Respondent. The Panel accepts as an undisputed fact that Complainant is the holder of a valid service mark registration for "TAE BO" in the United States.

Complainant has provided evidence (Complaint, Annex G) of its U.S. Patent and Trademark Office trademark application filed October 14, 1998 (serial number 75-569974), for registration of "TAE BO" on the Principal Register, covering, inter alia, audio and video tapes and clothing. Complainant states that it uses the trademark "TAE BO", inter alia, in connection with the production and distribution of video tapes in the United States and world wide (id., para. 12). The Panel has observed that Complainant maintains a website at "www.taebo.com" on which instructional video tapes are offered for sale under the "TAE BO" mark (Panelís visit to "http://www.taebo.com", July 1, 2000). The Panel accepts as an undisputed fact that Complainant has applied to register the trademark "TAE BO" on the Principal Register of the USPTO, and that Complainant uses the "TAE BO" trademark in connection with the production and distribution of video tapes.

Network Solutionsí WHOIS database query response (Complaint, Annex A) indicates that Entredomains, with Administrative Contact at "Domains, Entre", is registrant of the domain name "TAEBOTV.COM". The record of this registration was created on March 3, 2000, and was last updated on March 3, 2000.

Network Solutionsí WHOIS database query response (Complaint, Annex A) indicates that Entredomains, with Administrative Contact at "Domains, Entre", is registrant of the domain name "TAE-BOTV.COM". The record of this registration was created on March 3, 2000, and was last updated on March 3, 2000.

Complainant has submitted printouts of web pages indicating that the Internet addresses "www.taebotv.com" or "www.tae-botv.com" redirect Internet users to the website of "Entredomains". At this location, the following text appears "THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE[;] THE DOMAIN NAME THAT BROUGHT YOU HERE IS FOR SALE[;] Please contact us at offer@entredomains.com if you wish to purchase the name you have entered" (Complaint, Annex H). Complainant has also furnished redacted portions of a forwarded e-mail dated March 3, 2000, from "Bevans8576@aol.com", received by Complainant in response to an inquiry directed to Respondent, showing the following text "Someone emailed me about the two domain names I own[:] taebotv.com and tae-botv.com[;] Yes, they are for sale." Respondent has not disputed the authenticity of the website data or e-mail text submitted by Complainant, and the Panel accepts this information as undisputed fact.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant states that it is the holder of a valid service mark registration for "TAE BO" on the Principal Register of the USPTO and has applied to register the trademark "TAE BO" on the Principal Register of the USPTO (Complaint, para. 12 and Annexes E-H)(see Factual Background, supra).

Complainant states:

"13. The respondent Entredomains, Inc. registered the second-level Internet domain names TAEBOTV.COM and TAE-BOTV.COM on March 3, 2000. Ö

"14. The two domain names at issue are identical or confusingly similar to the TAE BO service mark. Both domain names include the words TAEBO or TAE-BO, which are identical to the registered mark, with only the addition of the suffix TV. The two domain names are identical or confusingly similar to the registered TAE BO mark in both sight, sound and meaning.

"15. Respondent has not made use of the service mark TAE BO in the bona fide offering of goods or services. Respondent has not otherwise acquired trademark or service mark right to the TAE BO mark. Respondent uses the domain name TAEBOTV.COM to link directly to a web site entitled ĎTHE DOMAIN NAME THAT BROUGHT YOU HERE IS FOR SALEí and/or ĎTHE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE,í which advertises numerous Internet domain names for sale, including the TAEBOTV.COM and TAE-BOTV.COM domain names. Ö

"16. Respondent, as an individual, business, or other organization, is not commonly know by the domain name, but instead has registered it solely for the purpose of selling it. At the web site linked to the TAEBOTV.COM domain name, Respondent offers to sell the domain name. Ö" (Id.)

Complainant requests that the Panel ask the Registrar to transfer the domain names

"taebotv.com" and "tae-botv.com" from Respondent to it (id., para. 13).

B. Respondent

Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail that Respondent was notified of the complaint and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

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

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 14(b)).

Complainant is the holder of a valid service mark registration for "TAE BO" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the service mark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 2. The Panel determines that Complainant has rights in the service mark "TAE BO". Based on the March 11, 1997, date of Complainantís registration of the service mark "TAE BO", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the service mark arose prior to Respondentís registration, on March 3, 2000, of the disputed domain names "taebotv.com" and "tae-botv.com".

Complainant has filed an application for registration of the trademark "TAE BO" on the Principal Register at the PTO, and has stated that it uses this trademark in commerce, including in the production and distribution of instructional videotapes. An application for trademark registration does not establish a presumption of validity regarding the subject mark 3. However, Complainantís existing service mark registration for the "TAE BO" mark covering instructional services, in conjunction with Complainantís undisputed assertion that it uses the trademark "TAE BO" in connection with the distribution and sale of instructional video tapes (and the Panelís verification of such claim by visit to Complainantís website), satisfies the Panel that Complainant has rights in the trademark "TAE BO" in connection with instructional video tapes.

The Policy requires that a Complainant have "rights" in a trademark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a trademark be registered by a governmental authority for such rights to exist. In U.S. law, trademark infringement actions may be brought on the basis of unregistered marks (under Lanham unfair competition provisions and state common law) 4, and U.S. legislation authorizing trademark infringement actions based on abusive domain name registration does not require registration of a trademark as a condition for obtaining relief 5. Based on the October 14, 1998, date of Complainantís application for registration of the trademark "TAE BO", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the trademark arose prior to Respondentís registration, on March 3, 2000, of the disputed domain names "taebotv.com" and "tae-botv.com".

Respondent has registered the domain names "taebotv.com" and "tae-botv.com". These names are identical to Complainantís service mark and trademark "TAE BO", except that (1) the domain name "taebotv.com" eliminates the space between "TAE" and "BO"; (2) the domain name "tae-botv.com" adds a hyphen between "TAE" and "BO"; (3) the domains name each add the generic top-level domain name ".com"; (4) the domain names each employ lower case letters, while the service mark and trademark are generally used with initial capital letters (i.e., "Tae-Bo"), and (5) the domain names each add the suffix "tv" following "TAE BO".

Insofar as domain names are not case sensitive, and insofar the elimination of spacing between terms and the use of hyphens between terms is common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "taebotv.com" and "tae-botv.com", the addition of the hyphen between the terms "TAE" and "BO" to form "tae-botv.com" (noting that Complainant generally uses its mark with such hyphenation), and elimination of the space between "TAE" and "BO" to form "taebotv.com", are differences without legal significance from the standpoint of comparing "taebotv.com" and "tae-botv.com" to "TAE BO" 6. Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider or enterprise as a source of goods or services 7.

Each of the disputed domain names adds the suffix "tv" to Complainantís service mark and trademark. In each case there is no space between the mark and the added term. The absence of a space is dictated by technological factors and customary practice among domain name registrants and users, and is not significant from the standpoint of comparing the disputed domain names to Complainantís mark. Complainant has rights in each of the marks that precede the suffix "tv". "TV" is a common and widely used abbreviation for the word "television" in American English. The abbreviation "TV" is used both in spoken and written English as a noun (referring to an audio-visual broadcast signal receiving, conversion and display device), and as an adjective (referring to a type of broadcast, i.e. a "tv" broadcast as distinguished, e.g., from a radio broadcast). Respondent does not, by adding a generic noun or common descriptive term or adjective following a word or letter mark, create a new or different mark in which it has rights or legitimate interests, nor does it alter the underlying mark. For purposes of determining whether the disputed domain names are identical or confusingly similar to Complainantís service mark and trademark, the Panel disregards the term "tv" that Respondent has tacked on to the mark 8. The panel determines that "taebotv.com " and "tae-botv.com" are confusingly similar to "TAE BO" in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a service mark and trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names"taebotv.com " and "tae-botv.com", other than that it has registered these domain names and has used them in a manner hereafter determined to be in bad faith. If mere registration of domain names was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain names so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of domain names does not establish rights or legitimate interests in the names.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)).

There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.

In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy 9. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others.

In the present case, Respondent is in the business of selling domain names. In light of this evident purpose, the Panel determines that Respondent registered the disputed domain names with the intention to offer them for sale to the public for valuable consideration in excess of its out-of-pocket costs. The Panel determines that Respondent has acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "taebotv.com" and "tae-botv.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Entredomains, has engaged in abusive registration of the domain names "taebotv.com" and "tae-botv.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "taebotv.com" and "tae-botv.com" be transferred to the Complainant, N.C.P. Marketing Group, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: July 5, 2000

 


 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

3. An application creates a presumption of use contingent on subsequent registration. 15 USCS ß 1057(c).

4. 15 USCS ß 1125(a). See, e.g., Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir. 1999). See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988), and Films of Distinction v. Allegro Film, 12 F. Supp. 2d 1068C.D. Cal 1998), regarding state common law trademark claims.

5. 15 USCS ß 1125(d).

6. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

7. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.

8. This process of analysis is different from that which would be used if Respondent had altered the words or letters that comprise Complainantís marks. Under different circumstances, a multifactored analysis involving the visual and aural impression of the different words or letters on a consumer would be more appropriate. Compare this sole panelistís decision in Aurora Foods Inc. v. David Paul Jaros, Case No. D2000-0274, decided June 7, 2000.

9. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online Sales.com, Inc., Case No. D2000-0343, decided June 19, 2000, and; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000.