WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting Inc. v. Rossi Hassad
Case No. D2000-1064
1. The Parties
Complainant is CBS Broadcasting Inc., a New York (USA) corporation, 51 West 52nd Street, New York, New York, USA, represented by Naomi B. Waltman, Esq., 51 West 52nd Street, New York, New York, USA, hereinafter the "Complainant."
Respondent is Rossi Hassad, 88-04-215th Street, Queens Village, New York, USA, represented by Abdool Hassad, 88-04-215th Street, Queens Village, New York, USA, hereinafter the "Respondent."
2. The Domain Name and Registrar
The domain name at issue is "cbspolls.com". The registrar is Network Solutions, Inc. (the "Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainantís complaint on August 15, 2000 (electronic version) and August 16, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirement 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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is September 22, 2000.
On August 30, 2000, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. On August 31, 2000, the Registrar transmitted, via email to the Center, its verification response, confirming that the Respondent, Rossi Hassad, is the registrant and administrative contact, and that the technical contact is WorldNIC Name Host (HOST-ORG).
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on September 22, 2000, the Center transmitted to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding via post/courier, facsimile, and e-mail. The postal address used for Respondent was as follows:
Rosshi Hassas (sic)
New York, New York 11427 USA
A response (the Response) was received on October 9, 2000 (hard copy).
On November 16, 2000, in view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent) the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received on November 17, 2000, Mr. Lyonís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The Projected Decision Date was December 1, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
By electronic mail communication dated November 2, 2000, the Complainant requested, pursuant to Rule 10, permission to file a reply to the Response. Respondent objected to this request by electronic mail communication dated November 17, 2000. By order dated November 20, 2000 the Panel granted the request in part, permitting a reply limited to the issue of whether Respondent ever made a demand for payment to the Complainant 1. Complainant filed as its reply a declaration of Sanford I. Kryle, its Vice President and Associate General Counsel (the Reply) on November 21, 2000, and Respondent filed its response (the Rebuttal) on November 26, 2000.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the portion of the Reply that addresses the issue specified in the Panel's order, the Rebuttal, the evidence presented, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
Complainant is the owner of several registered United States service marks that include the initials CBS, among them the initials CBS and those initials with a distinctive design resembling an eye. Complainant and its predecessor companies have used these marks in commerce continuously since the 1930s. They are familiar to anyone who watches television, anywhere in the world, even infrequently.
In addition to its broadcasting, Complainant operates its business on the Internet, through ownership and operation of the website "CBS.com" and ownership interests in "CBSNews.com", "CBS.sportsline.com", "CBS.marketwatch.com", and similar sites. CBS regularly conducts polls on a variety of issues. These are regularly cited, usually by a reference including the initials CBS, in all print and electronic news media. A section of the "CBSNews.com" site is entitled "CBS News Polls". A visitor to the "CBSNews.com" site may click on that name on the home page and proceed to that section.
Complainant derives substantial revenue from licensing its CBS marks in connection with merchandise used for marketing and promotional purposes, and in retail sales.
Complainant has not licensed any of its marks to Respondent.
Respondent registered the Domain Name on October 2, 1999. He states that the letters"cbs" refer to "Computer Based Surveys/Convenience Based Sampling." Convenience sampling, according to Respondent, is a statistical method that, in contrast to ramdom sampling, focuses on a more identifiable group of persons sampled. (Response, p. 9) While Respondent, a Ph.D. in health sciences, claims to use convenience sampling in his work (Response, p. 10 ), he does not assert any proprietary interest in the term convenience sampling or his own variant convenience based sampling, or any particular identification of himself, his work, or his website with either term, or that either of these terms is customarily identified with him.
The "CBSpolls.com" site was used initially to offer "for sale or lease" a number of "Executive Domain Names," including "CBSpolls.com", "OPRAHshows.com", and "MCIgiant.com" (Complaint, Exhibit E; Response, p.10). Subsequently to the cease and desist letter described in the following paragraph, the site has changed. (Complaint ∂5; Response, p. 12). A recent (November 21) visit to the site reveals an opportunity to vote in a poll "Who will be President," advertising, links to other sections that cannot be accessed, and an "under construction" notice. Respondent claims (Response, p. 12) that future use is awaiting further software development.
Complainant wrote to Respondent on January 4, 2000, complaining of the registration and use of the Domain Name, and requesting transfer to Complainant. A representative of Complainant spoke to Respondent by telephone, also on January 4, 2000, and conveyed the same message. The record reveals no response to this demand.
5. Partiesí Contentions
Complainant contends that the Respondent has acquired a domain name that incorporates the identifying portion of Complainantís registered marks; that the Domain Name is confusingly similar to Complainantís marks; that the Respondent has no rights or legitimate interests in respect to the Domain Name; that Respondentís offer to sell the Domain Name violates the Policy, and that the Domain Name was registered and is being used in bad faith. Complainant cites as evidence of bad faith (a) the offer to sell the Domain Name (and other domain names incorporating letters that comprise the identifying portion of well-known trademarks and to which Respondent has no rights or interests) on Respondent's website, and (b) Respondent's "unsolicited offer [made in the telephone conversation on January 4, 2000] to sell the [Domain Name] to CBS for a price well in excess of his out-of-pocket costs" (Reply, ∂4). It also asserts that Respondent's abrupt shift in site use and content immediately after receipt of Complainant's demand letter is an after-the fact attempt to mask this purpose, and perforce Respondent's acknowledgment of his initial bad faith.
Respondent claims a legitimate right to use the Domain Name based upon his use of convenience sampling in his work. He claims that upon completion of the necessary software he intends to use his web site for legitimate purposes involving convenience sampling. While Respondent admits his offer to sell the Domain Name (and the other names) on his site, he states that he never approached a mark owner and has never sold any of his domain names. In the Rebuttal, Respondent does not expressly deny Complainant's assertion of an "unsolicited offer" to sell the Domain Name, but does argue that the sworn statement in the Reply is a legal conclusion rather than a statement of fact, and therefore insufficient to carry Complainant's burden of proof on the issue of bad faith.
Respondent denies that use of the Domain Name for his website is likely to cause confusion with Complainantís marks, and offers to includes a disclaimer of affiliation with Complainant. He states that initials may have many possible meanings, and that, at least to statistically minded people, CBS is as likely to suggest convenience based sampling and computer based surveys as Columbia Broadcasting System or any of Complainant's activities. 2
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate rights or interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and used in bad faith.
The Domain Name specifically includes CBS, for which the Complainant has a longstanding and world famous service mark, and combines those letters with a word describing an activity that Complainant regularly undertakes in its business and for which it is well known. The likelihood of confusion is obvious. 3
B. Legitimate Interest
Complainant has not licensed or otherwise permitted Respondent to use any of its marks in any manner, including use in the Domain Name. Respondent has never been known by the initials CBS or by the techniques he claims those initials represent. Given the recognition the marks enjoy and the value they represent, to use the defining portion of them in any fashion requires Respondent to demonstrate some legitimate interest in or fair use of the initials or Domain Name. His semantic gimmickry with a little known, descriptive statistical term falls far short of any such showing.
C. Registration and Use in Bad Faith
Respondent's initial use of the Domain Name for a website on which he offered it for sale to the highest bidder is compelling evidence of use and registration in bad faith 4. The only question is whether Respondent's ceasing to use the Domain Name for that purpose immediately after Complainant's protests purges that taint. Complainant correctly points out that the timing of such conduct undermines a claim of good faith, but that alone is not determinative, particularly in light of Complainant's unexplained delay of seven months in commencing this proceeding. Ignoring post-cease and desist letter conduct entirely would discourage resolution of this type of dispute outside litigation or arbitration. The Panel prefers to rest its conclusion on the fact that Respondent has at no time demonstrated any credible connection between the distinctive portion of the service mark he has copied, on the one hand, and himself or the use to which the site has been put, on the other. Particularly when the mark is famous, as is the case here, that fact, when considered with the initial attempt at auction sale, establishes bad faith.
The Administrative Panel finds that the Domain Name registered by Respondent incorporates a registered service mark of Complainant; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondentís Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Dated: November 29, 2000
1. In the Reply the Complainant addressed matters in addition to the issue specified in the Panel's order. The Panel has not considered any of this extraneous matter in deciding this case.
2. Respondent also accuses Complainant of intimidation in the January 4, 2000 telephone conversation (Reply, p. 12) and asks for a finding of reverse domain name hijacking (Reply, p. 14). Based on the Panel's findings below, this request is denied.
3. Other Panels have made similar findings. See, e.g. CBS Broadcasting Inc. v. Sale's, WIPO Case No. D2000-0255, WIPO Case No. D2000-0255.
4. The evidence is in conflict on whether Respondent made a direct offer to sell the Domain Name to Complainant, the service mark owner. Without an opportunity to test each party's factual assertions, the Panel cannot resolve this factual issue. Rule 13; United States Olympic Committee v. Tri B-N-Eco. Project, WIPO Case No. D2000-0435. In this case, Complainant's rote recital of the language of ∂4(b)(i) of the Policy, without factual specificity, cannot overcome