WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Media Research Center v. Nick Bucci

Case No. D 2000-1280

 

1. The Parties

Complainant is Media Research Center (hereinafter "Media"), a Virginia Non-Stock Corporation with its principal place of business at 325 South Patrick Street, Alexandria, Virginia 22314, U.S.A. Respondent is Nick Bucci, an individual. According to the registration, the registrantís address is 1415 West 77th Street, Cleveland, Ohio 44102, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is "parentstelevisioncouncil.com" registered with Dotster.com, Inc ("Dotster.com").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Media on September 28, 2000, in hardcopy and on October 3, 2000, by email. The Complainant made the required fee payments. On October 3, 2000, the Center acknowledged the receipt of the Complaint to the Complainantís authorized representative, and assigned this matter Case No. D 2000-1280.

On October 3, 2000, the Center requested Dotster.com to verify the registration data. By email of October 3, 2000, Dotster.com, Inc. confirmed that it is the Registrar of the domain name registration and, inter alia, that Nick Bucci is the current registrant.

Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on October 9, 2000, sent to Respondent, with a copy to the Complainant, a Notification of the Commencement of the Administrative Proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is October 9, 2000.

Respondent never filed a formal response to the complaint and a notice of default was sent to him on October 31, 2000.

On November 9, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").

This decision is based on the information contained in the above documents.

 

4. Factual Background

Complainant has no registered trademarks. Complainant owns several common law trademarks or service marks identifying goods and services produced by the Parents Television Council ("PTC"). Complainantís mark "Parentsí Television Council" is an unregistered trademark and service mark which has acquired secondary meaning nationwide as a mark identifying the goods and services of Complainant. Complainant has filed a United States Trademark Application S.N. 75/425033 for "www.ParentsTV.org", and the mark was published for opposition on July 11, 2000. The opposition period has expired, and no objection was filed. An application for the Parents Television Council logo has been prepared, but not yet filed.

The PTC is a project of Media Research Center, an Internal Revenue Code Section 501(c)(3) non-profit research and education foundation dedicated to improving the content of entertainment programming with emphasis on prime time television. PTC produces goods and services, including newsletters, special reports, brochures, advertisements, guidebooks, Internet-based information products, and other electronic and print publications to promote its educational mission, and uses the previously identified trademarks to identify those goods and services.

On June 20, 2000, Respondent registered the domain name "parentstelevisioncouncil.com". Respondentís registration information with Dotster.com listed the Registrant of "parentstelevisioncouncil.com" as Nick Bucci, 1415 West 77th Street, Cleveland, Ohio 44102, U.S.A. The phone number and email address listed were (877) 282-3773 and "nbucci@usa.net" respectively

 

5. Partiesí Contention

Complainant has requested that the domain name be transferred to Complainant because:

(1) the domain name "parentstelevisioncouncil.com" is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests with respect to the domain name; and

(3) Respondentís domain name was registered and used in bad faith because Respondent registered the domain name to disrupt PTCís business of educating the public about television programming.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes 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;

(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. They will be addressed separately below, after first addressing jurisdiction.

I. Jurisdiction and Procedure

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

The Registrar identified Nick Bucci as the registrant. WIPO served the complaint on Mr. Bucci at 1415 West 77th Street, Cleveland, Ohio 44102, USA.

Respondent was given an opportunity to tell his side of the story by formally responding to the Complaint. He did not do so and was notified he was in default. He was informed of the consequences of the default. Namely, that the panel would be informed of the default and would have sole discretion to consider Respondentís later response to the Complaint and that the Center, notwithstanding the default, would continue to send all case related communication to Respondent.

In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to Mr. Bucci to respond. Formal notice was given to Nick Bucci. Therefore, this administrative panel has jurisdiction to decide this dispute as presented.

II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Complainantís mark, "Parentsí Television Council", is an unregistered trademark or service mark which has acquired secondary meaning nationwide as a mark identifying the goods and services of the PTC. Thus, the first issue is whether such common law rights are sufficient, or whether Complainant must have registered trademarks.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the 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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Under United States law the fact that the Complainant does not have a registered mark does not end the trademark or service mark rights analysis. Actual use in commerce, without more, establishes protectible trademark rights under United States common law. (Footnote 1) The "use in commerce" standard requires (a) a bona fide use of a trademark or service mark in the ordinary course of trade, and (b) not made merely to reserve a right in a mark. (Footnote 2)

Based on all of the facts, I find that Respondentís domain name "parentstelevisioncouncil.com" is identical or confusingly similar to Complainantís trademarks or service marks, and that Complainantís common law trademarks are sufficient trademarks under the ICANN Policy and Rules. Respondentís use is likely to cause confusion, mistake or deception as to the affiliation, connection or association between Complainant and Respondent and/or the sponsorship or endorsement of Respondentís website by Complainant. Therefore, the requirement of paragraph 4(a)(i) is met.

III. Rights or Legitimate Interests in Respect of the Domain Name

Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. Respondent has not filed a response to the Complaint. Complainant has alleged that Respondent has no legitimate rights or interests in the name. I find nothing in the record which would indicate that Respondent has any rights or legitimate interests in the domain name. Indeed, I find that the record establishes he does not. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been fulfilled by Complainant.

IV. Bad Faith

The third element the Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

One of the targets for PTCís program to clean-up television has been the World Wrestling Federation ("WWF"). After this domain name dispute arose, Respondent wrote to a WWF owned, affiliated, or aligned web site seeking assistance. In his email to "fanstakeaction@wwf.com" sent on September 13, 2000, he explained that he registered the name "mainly to annoy the PTC." Once having registered it, he used it to confuse PTC supporters by routing potential users to WWF owned, affiliated, or aligned websites. He explained: "I registered http://www.parentstelevisioncouncil.com, and forwarded it via meta-refresh to http://www.wwf.com, thinking that the obviously uneducated anti-first amendment drones that werenít aware of the real address http://www.parentstv.org would visit and go nuts."

When PTC complained about such activities and requested transfer of the domain name, he refused to do so stating ICANN disputes are lengthy. He offered no legitimate bases for refusing the transfer. Rather he sought assistance from WWF supporters as to whether "there is anything I can do without going to court or without giving up."

Considering all of the evidence, I find that the Respondent both registered and used the domain name in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy has been proved.

 

7. Decision

Complainant has proved the necessary elements that the name is identical or confusingly similar to its trademark or service mark, that Respondent has no rights or legitimate interests in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. The Panel requires that the domain name "parentstelevisioncouncil.com" be transferred to Complainant.

 

 


 

 

Thomas L. Creel
Sole Panelist

Dated: December 15, 2000

 


 

Footnotes:

1. Jerome Gilson, Trademark Protection and Practice, ß3.02[2].

2. Gilson, supra note 1.