WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CBS Broadcasting Inc. v. Worldwide Webs, Inc.

Case No. D2000-0834

 

1. The Parties

The Complainant is CBS Broadcasting, Inc., a corporation organized in the State of New York, United States of America (USA), with place of business in New York, New York, USA.

The Respondent is Worldwide Webs, Inc., with address in Delray Beach, Florida, USA.

 

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

The disputed domain name is "ilovelucy.com".

The registrar of the disputed domain name 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 by courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on July 20, 2000, and by e-mail received by WIPO on July 21, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 21, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc (with the Registrarís Response received by WIPO on July 26, 2000). On July 21, 2000, WIPO completed its formal filing compliance requirements checklist.

b) On July 26, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPOís telefax report indicates successful transmission of the notification.

c) On August 16, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, telefax and courier mail.

d) On August 21, 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 August 21, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On August 22, 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 September 4, 2000. On August 22, 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 registered the combination word and design trademark and service mark "I Love Lucy" on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 1,715, 262, dated September 15, 1992, covering, inter alia, television program series, dolls and board games, clothing, plates and mugs, stationary, and television programs recorded on video tape (Complaint, Exhibit C). The word and design mark consists of the cursive terms "I Love Lucy" appearing within quotation marks inside a single line drawing in the figurative shape customarily used to depict a heart. There is no disclaimer as to any word(s) or other portion of the mark indicated on the certificate of registration. This registration is valid and subsisting. The "I Love Lucy" mark has been used in commerce since at least 1992 (based on the aforesaid registration), and continues to be used in commerce. The aforesaid trademark and service mark registration indicates a date of first use of October 15, 1951, in connection with television program series.

Complainant advertises and sells various merchandise under the "I Love Lucy" mark on its website at http://www.cbs.com. Such advertisement uses both the words "I Love Lucy standing alone, and the combination of words and design as indicated in Complainantís registration (id., at para. 12 and Exhibit D).

According to the registrarís verification response to WIPO, dated July 26, 2000, "Worldwide Webs, Inc." is the listed registrant of the domain name "ILOVELUCY.COM". The Administrative Contact is "Ceccola, Vincent J". The addresses listed for the registrant and the Administrative Contact are identical. (Registrarís Response, supra). A Network Solutionsí WHOIS database search indicates that the record of registration was created on February 27, 1997, and that the record was last updated on April 26, 2000 (Complaint, Exhibit A).

A printout, dated July 18, 2000, of a web page identified by the address "www.ilovelucy.com", is headed with "Doing Business on the Web [/] Dynamic Sites for Internet Commerce [/] Worldwide Webs Inc.". This webpage prominently displays the name "World Wide Webs Inc." and its logo. The text of the web page states, inter alia, "This domain is presently being offered for sale, lease, or rent. For additional information on this, or any of the following [listed vertically] BrowardCounty.org, DadeCounty.org, PalmBeach County.org, IloveLucy.com, RapidRefund.com, InternetSeminars.com, WashingtonWizards.com, please email domains@worldwidewebs.com." (Complaint, Exhibit E)

There is no evidence on the record of this proceeding of a use by Respondent of the disputed domain name other than in connection its offer of sale as indicated immediately above.

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)).

 

5. Partiesí Contentions

  1. Complainant

Complainant states in its own words:

"12. This Complaint is based on the following grounds:

- "Since at least October 15, 1951, CBS has been using the I LOVE LUCY mark in interstate commerce in connection with its television programming services. CBS also uses the I LOVE LUCY mark in connection with the sale of various merchandise items, including but not limited to, hats, mugs, T-shirts and videocassettes.

- "CBS is the owner of, inter alia, the following valid, subsisting and existing federal service mark registration with the United States Patent and Trademark Office for the I LOVE LUCY mark: United States Registration No. 1,715,262 for television programs recorded on videocassettes and videotapes, for stationery, calendars, trading cards, posters and comic books, for plates and mugs, for clothing, for dolls and board games and for television program series. A copy of said registration certificate is attached to the hard copy of this Complaint as [an Annex], and is incorporated herein by reference. CBSís registration certificate is prima facie evidence of the validity of CBSís trademark and its exclusive right to use this trademark in commerce.

- "Over the past forty-nine years, CBS has spent a substantial sum of money advertising and promoting its services under the I LOVE LUCY mark, which has resulted in the creation of a great deal of goodwill and popularity for the mark.

- "CBS also has licensed, and continues to license, use of the I LOVE LUCY mark in connection with the marketing, promotion and sale of various merchandise items, including but not limited to, videocassettes, greeting cards, tins, beanie bears, calendars, mugs, t-shirts, hats, dolls and board games. To date, CBS has received significant revenues from licensing the I LOVE LUCY mark for use in connection with these goods. These goods are sold in stores throughout the world, including The CBS Store located in Los Angeles, California and New York, New York. These goods can also be purchased through CBSís website, located at www.cbs.com. (A copy of relevant pages from the CBS.COM web site featuring I LOVE LUCY merchandise is annexed to the hard copy of this Complaint as [an Annex]).

- "Over the years, CBS has also sought to vigorously protect its trademark rights in the I LOVE LUCY mark, and has pursued numerous claims and causes of actions against unauthorized uses of the I LOVE LUCY mark. See, e.g., CBS v. Herbko International Inc., 98 Civ. 5294 (DC) (S.D.N.Y. 1998); CBS v. JC Bears, 00 Civ. 0441 (DLC) (S.D.N.Y. 2000).

- "As a result of CBS's long use of the I LOVE LUCY mark, its advertising and promotional efforts and expenditures in connection with the mark, and the wide recognition achieved for the mark, the public has come to associate the I LOVE LUCY mark with services originating with, emanating from, sponsored by or otherwise associated with or approved by CBS. In addition, the I LOVE LUCY mark also has become an extremely valuable symbol of CBS with substantial commercial magnetism, and has become a famous mark.

- "On February 27, 1997, Respondent registered the domain name ILOVELUCY.COM, which is confusingly similar to the mark I LOVE LUCY. The elimination of the space between the words ĎI,í ĎLOVE,í and ĎLUCY,í and the addition of the generic top-level domain (gTLD) name Ď.comí are without legal significance. See, e.g., Sportyís Farm v. Sportsmanís Market, 202 F.2d 489, 498 (2d Cir. 2000) (citing Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999)).

- "Respondent registered the domain name in bad faith. Respondent has no rights or legitimate interests in the domain name.

- "Respondent is not commonly known by the name ILOVELUCY or ILOVELUCY.COM.

- "Respondentís bad faith is further confirmed because it uses the ILOVELUCY.COM web site to offer Ďfor sale, lease or rentí the ILOVELUCY.COM domain name, as well as a host of other domain names, including WashingtonWizards.com. (A printout of Respondentís web site, dated July 18, 2000, is annexed to the hard copy of this Complaint as [an Annex]). Respondentís offer to sell, lease or rent the domain name at issue for valuable consideration in excess of its out-of-pocket costs constitutes evidence of bad faith registration and use. See, e.g., World Wide Wrestling Federation v. Bosman, WIPO Case No. D1999-0001; CBS v. Saidi, WIPO Case No. D2000-0243.

- "CBS previously wrote to Respondent and advised it that its registration of the ILOVELUCY.COM domain name violated CBSís rights in its I LOVE LUCY mark. Subsequently, Respondent advised CBS that ĎThe only true way to protect the use of a trademark on the Internet is to file for protection specifically to the Internet.í

- "Thereafter, CBS advised Respondent that its contention was in error, and that federal courts have routinely enjoined the use of domain names misappropriated by third parties, where, as here, the domain name is confusingly similar to a federally registered trademark, such as I LOVE LUCY, or where its use would dilute the value of a famous mark. See, e.g., Teletech Customer Care Management, Inc. v. Tele-Tech Co., 977 F. Supp. 1407 (C.D. Cal. 1997) (enjoining use by defendant of TELETECH.COM domain name given plaintiffís likelihood of success on its federal and state dilution claims). CBS received no response to this letter." (Complaint)

Complainant requests that the Panel ask the registrar to transfer the domain name "ilovelucy.com" from Respondent to it (id., para. 13).

B. Respondent

Respondent did not reply to 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. 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 and telefax 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. 15(a)).

Complainant is the holder of a trademark and service mark registration for the combination word and design mark "I Love Lucy" and has used that mark in commerce for a substantial period of time (see Factual Background, supra). Complainantís registration of the "I Love Lucy" mark on the Principal Register at the PTO establishes a presumption of its validity in U.S. law. The Panel determines that Complainant has rights in the trademark and service mark "I Love Lucy". Based on the September 15, 1992, date of Complainantís registration of the trademark and service mark "I Love Lucy", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the mark arose prior to Respondentís registration, on February 27, 1997, of the disputed domain name "ilovelucy.com".

Respondent has registered the domain name "ilovelucy.com". This name is identical to Complainantís trademark and service mark "I Love Lucy", except that (1) the domain name eliminates the space between the words "I", "Love" and "Lucy", (2) the domain name adds the generic top-level domain name ".com", (3) the domain name employs lower case letters, while the mark is generally used with initial capital letters, and (4) the domain name employs only words while the registered mark consists of a combination of words and design.

Insofar as domain names are not case sensitive, and the elimination of space between terms is dictated by technical factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "ilovelucy.com", and the elimination of spaces between the words "I", "Love" and "Lucy" to form that name, are differences without legal significance from the standpoint of comparing "ilovelucy.com" to "I Love Lucy". Similarly, the addition of the generic top-level domain (gTLD) name ".com" is 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 as a source of goods or services.

Complainantís registered mark consists of a combination of words and design that are different from a word mark standing alone. The Panel must therefore determine whether Respondentís "ilovelucy.com" domain name, which consists of solely of words, is confusingly similar to Complainantís registered mark in light of the differences arising from Complainantís combination of words and design.

In determining whether word marks (and, by analogy, domain names) and combination marks are confusingly similar, courts and administrative authorities in the United States take into account a variety of factors, ultimately seeking to establish whether there is a likelihood of confusion on the part of consumers as to the source of goods or services sold under the marks. In In re Diamond Pacific Tool Corporation, 1997 U.S. App. LEXIS 10722 (CAFC 1997), the Court of Appeals for the Federal Circuit, in considering a challenge to the USPTOís rejection of an application for registration based on confusing similarity with earlier-registered marks, said:

"Likelihood of confusion depends upon whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. See Paula Payne Prods. Co. v. Johnson Publ'g Co., 473 F.2d 901, 902, 177 U.S.P.Q. (BNA) 76, 77 (CCPA 1973). The first step in determining whether an applicant's mark is likely to cause confusion involves consideration of Ďthe similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.í In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. (BNA) 563, 567 (CCPA 1973). Other relevant considerations include the similarity or dissimilarity of the goods as described in the application and existing registrations, including whether such goods would appear in the same trade channels. See id. Any doubt as to likelihood of confusion must be resolved against the newcomer because the newcomer has the opportunity and duty to avoid a likelihood of confusion with an existing mark. In re Shell Oil Co., 992 F.2d 1204, 1209, 26 U.S.P.Q.2D (BNA) 1687, 1691 (Fed. Cir. 1993)." (1997 U.S. App. LEXIS 10722, at 4)

In undertaking a comparison between words, and word and design combinations, a finder of fact may weigh the relative impression that each is likely to have on the consumer. In Diamond Pacific, id., for example, in affirming the decisions of the USPTO Trademark Trial and Appeal Board and the trademark application examiner, the Court observed that:

"Ö they compared Applicant's mark in its entirety to the cited marks, noting that the word portion of the cited marks deserved greater weight than the design portions after finding that Ďit is by the words that purchasers will refer to the goods, and the words, rather than the design feature or the stylized lettering, will have a greater impression on them." (Id.)

In the present proceeding, the Panel determines that the words "I Love Lucy" are, standing alone, likely to make an impression on consumers and users of the Internet that will lead them to associate the domain name "ilovelucy.com" with goods and services originating with Complainant. Domain names are not at the present stage of technological implementation able to incorporate designs, so that neither Respondent nor Complainant is able to reflect Complainantís combination mark directly in a domain name. Complainantís mark has long been associated with a television series identified among the public by the words "I Love Lucy", without reference to a design. The absence of the design is not likely to break the association that consumers and users of the Internet would ordinarily make with Complainantís goods and services. The Internet is the channel of commerce that would be used by either Complainant or Respondent in advertising and selling goods or services under the disputed domain name. Finally, there is a substantial likelihood that Respondent chose the "ilovelucy.com" domain name precisely because of its commercial value in identifying Complainantís goods and services.

Based on the foregoing factors, the Panel determines that the disputed domain name, "ilovelucy.com" is confusingly similar to Complainantís combination mark, "I Love Lucy", within the meaning of paragraph 4(a)(i) of the Policy. Complainant has therefore 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 name "ilovelucy.com", other than that it has registered this domain name and has used it in a manner hereafter determined to be in bad faith. If mere registration of the domain name 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 name so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of a domain name does not establish rights or legitimate interests in the name so as to avoid a determination of the absence of rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. 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 (1) that the 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)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Respondent has offered the disputed domain name for sale to the public on a website identified by that name. 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. 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 instant proceeding, Respondent has sought to profit from the mere registration of Complainantís trademark and service mark as a domain name. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith.

In the interests of administrative efficiency, the Panel need not determine whether Respondent has engaged in other bad faith activities.

Complainant has 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 name "ilovelucy.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Worldwide Webs, Inc., has engaged in abusive registration of the domain name "ilovelucy.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "ilovelucy.com" be transferred to the Complainant, CBS Broadcasting Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: September 4, 2000


 

Footnotes:

1. The heart design is that used on the traditional Valentineís Day greeting card as opposed to that used in a medical textbook.

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

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

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

5. 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.

6. See also Dr. Seuss Enterprises v. Penguinbooks USA (9th Cir. 1997), 109 F.3d 1394, at 1403-06.

7. 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; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000, and; Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case, No. D2000-0580, decided August 30, 2000.