WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Broadcast America Partnership, Ltd. d/b/a America One Television v. Available Domains

Case No. D2000-1417

 

1. The Parties

Complainant is Broadcast America Partnership, Ltd. located in Irving, Texas USA.

Respondent is Available Domains located in Decatur, Illinois USA.

 

2. The Domain Name and Registrar

The domain name at issue is <a1tv.com> ("Domain Name").

The registrar is BulkRegister.com, Inc.

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

Complainant submitted its complaint in this proceeding on October 19, 2000. Respondent submitted its Response on November 25, 2000.

On January 4, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as Panelist.

 

4. Factual Background

Complainant is a general entertainment broadcast network, providing family-oriented programming to television stations throughout the United States. Complainant is the owner of a Federal trademark registration for a design mark that comprised of the word "television" beneath a design consisting of a banner containing the word "America One" that is superimposed over the letter "A" and the numeral "1". Complainantís application was filed on January 17, 1995, and it claims first use on February 1, 1995. Although Complainant claims it actively uses the term "A1TV" and is commonly known by that name, the only supporting evidence of such use consists of online references dated May 28, 2000. Complainant registered the domain name AmericaOne.com on February 24, 1996.

Respondent registered the Domain Name on September 13, 1998. At that time, it appears Respondent was operating under the name USA Vintage Sales. As the Internet expanded, Respondent "researched and purchased domain names that would be of a worldwide emphasis for future use." Respondentís principal, Tom Chapman, states that he "personally researched the prospective names via the US Patents and Trademarks Database." Respondent found no registration record for A1TV and states that he was not aware of the America One Broadcasting Corporation at that time. Respondent "discovered the possibility of prospective relationships with other companies through lending or transfer of the names."

In 1999, Respondentís "personal emphasis in the business world changed as [he] turned to full time ministry in assisting others in need." As part of that shift, he changed the registrantís name from USA Vintage Sales to Available Domains "to allow the worldwide market to be aware the names may be available." Respondent now holds over 500 domain names which are available for purchase or other arrangements at the web site www.corporatedomainnames.com. The proceeds from this activity are used to "pay personal expenses as well as finance the non profit activities to the needy."

In April 2000, it appears that a representative of Complainant contacted Respondent and offered $500 to acquire the registration for the Domain Name. Respondent made a counter-offer seeking $25,000.

Several companies besides Complainant claim rights in the mark A 1 in connection with television services. It is not clear whether any of the uses cited by Respondent predate Complainantís claimed use.

 

5. Partiesí Contentions

Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.

Respondent contends that it has registered and used the Domain Name in good faith and that Complainant lacks exclusive rights in the mark A 1 TV.

 

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no rights or legitimate interest in the domain name; and

(3) the domain name has been registered and used in bad faith.

In this case, I find that Respondent lacks any right or legitimate interest in the Domain Name. It did not make bona fide use of the Domain Name prior to this dispute and had no demonstrable plan to do so.

I am also concerned about the evidence surrounding the registration and use of the Domain Name. Respondentís statements quoted above essentially admit that it registered the Domain Name for the purpose of trafficking in the sale of domain names. The Domain Name is now offered for sale at a price far beyond any actual expense incurred by Respondent. The fact that the proceeds from the sale may be used to further Respondentís ministry is not a justification. Worthy ends do not justify improper means. Respondentís registration and use of the Domain Name is part of a pattern of speculation or trafficking in Domain Names that may deprive the owner of a trademark from reflecting the mark in a corresponding domain name. In my view, such conduct constitutes bad faith use and registration when the Respondent knew or should have known that the domain name at issue would interfere with the prior trademark rights of another. See J.Crew International, Inc. v. Crew.com, ICANN Case No. D2000-0054)(WIPO, April 20, 2000)(holding that registration of domain names for speculative purposes constitutes an abusive registration when (1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration of the domain name; (2) the respondent had constructive or actual notice of anotherís rights in a trademark prior to registration of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name prevents the trademark holder from having a domain name that corresponds to its registered mark).

Complainantís problem centers on the first element of its claim: is the domain name identical or confusingly similar to a mark in which Complainantí has rights?

Complainant does not own a federal registration for the mark A1TV or A1 for television. The mark it has registered is listed on the Trademark Office search records as "America One Television A 1". The salient feature of that mark is "America One". In contrast, the term A1 has a different connotation, indicating "first class" or "excellent." The term A1 would not generally call to mind "America One" for most Internet users. The term A1 is laudatory in nature and widely used. As a result, the use of other, more distinctive terms such as America One is likely to avoid confusion.

The record before me contains no evidence to show that Complainant established common law rights in the mark A1 TV or A1 prior to Respondentís registration of the Domain Name. While Complainant shows references to it by others as A1TV, all examples come long after Respondentís registration of the Domain Name. Moreover, because A1 for television is a weak, non-distinctive term, the examples of use in the record are inadequate to show rights in A1TV as a common law trademark. There is no evidence of advertising or promotional use by Complainant of A1TV prior to September 13, 1998, when Respondent registered the Domain Name. I also find it significant that Complainant obtained the domain name AmericanOne.com in 1996 and did not secure A1TV.com or A1 before Respondentís registration in 1998. This fact supports the conclusion that Complainant lacked any interest in A1TV at that time. Under these circumstances it is plausible that Respondent registered the domain name without any intent to trade upon or interfere with Complainantís rights.

Accordingly, I find that Complainant has failed to meet its burden under Paragraph 4(a)(i) of the Policy.

 

7. Conclusion

I conclude that Complainant failed to show that the Domain Name A1TV.com is identical or confusingly similar to a trademark in which Complainant has rights. Therefore, I find in favor of Respondent and deny Complainantís request for transfer of the Domain Name.

 


 

Mark V. B. Partridge
Sole Panelist

Dated: January 23, 2001