WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Star Newspapers Limited v. Virtual Dates Inc.
Case No. D2000-1612
1. The Parties
The Complainant is:
Toronto Star Newspapers Limited, One Yonge Street, 6th Floor, Toronto, Ontario, M5E 1P9 Canada.
The Respondent is:
Virtual Dates, Inc. of 6292 Windlass Circle, Boynton Beach, Florida 33437, USA
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "tstv.com"
("the Domain Name").
The Registrar with whom the Domain Name is registered is:
Network Solutions, Inc.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 23, 2000.
The Panel has checked the file and confirms the WIPO Centerís finding of proper compliance with the Rules for filing of the complaint.
On December 27, 2000, Respondent filed its Response within the relevant deadline.
The Respondent elected to have the dispute decided by a three member Administrative Panel and on January 23, 2001, the Panel comprising Gary N Bouchard and Dana Haviland, Panelists and Dawn Osborne, Presiding Panelist was duly appointed in accordance with Rule 6(e) and the due date for the Panel's decision was set as February 5, 2001.
4. Factual Background
Complainant is a Canadian producer of television programs and the owner of a trademark TSTV in Canada.
Respondent is in the business of warehousing and utilizing domains primarily of a generic nature.
5. Parties Contentions
The Complainant states that:
"TSTV" is a registered trademark of the Complainant. The Domain Name consists of the trademark of the Complainant to which ".com" is added. The domain name "tstv.com" is obviously identical or confusingly similar to the Complainantís mark, TSTV. The ".com" does not serve to distinguish the Respondentís domain name from the Complainantís trademark, and is of no consequence in making this assessment.
The Complainant is the owner of Canadian trademark registration number TMA 496,452 for "TSTV", registered on June 19, 1998, for use in association with the following goods and services:
Pre-recorded video cassettes, video laser discs, digital video discs, audio cassettes compact discs, CD-ROM discs; and clothing, namely shirts, jackets, sweaters, pants, hats, caps and hat visors.
Television broadcasting services, telecommunication services and interactive electronic communication services, namely, the development, production, broadcast, recording and distribution of programs for television, computers and display terminals.
This registration is valid and subsisting. The Complainant has used the trademark TSTV in Canada on or in association with the above-described goods and services since May 26, 1998. The Complainant owns the domain name tstv.ca, which it registered with the Canadian Internet domain name registrar on April 27, 2000, (and modified on August 8, 2000). The Complainant also owns the domain name torontostartv.com, which it registered with the Canadian Internet domain name registrar on October 21, 1998. The Complainant registered the domain name tstv.ca for its web site because the domain name tstv.com had already been registered by the Respondent and was therefore unavailable.
Since May 26, 1998, the Complainant has offered, operated, advertised and promoted its television broadcasting channel known as TSTV (Toronto Star TV) distributed on cable in Ontario, Canada. Since April 2000, TSTV has been available worldwide via the Internet Webcast at domains tstv.ca and torontostartv.com.
The Complainant has invested considerable time, money and effort in creating, maintaining and promoting its television broadcasting channel, webcasting facilities and associated web site tstv.ca, under the mark TSTV. It has extensively advertised and marketed its television broadcast channel in association with the mark TSTV in a wide variety of media, including print (magazine and newspaper), broadcasting, internet, and sales and media literature.
As a result of such advertising and promotion, the Complainant, its television broadcast channel and web site tstv.ca have become well-known in Canada. The Canadian public has come to associate the TSTV mark with goods and services originating with, sponsored by or otherwise associated with or approved by Toronto Star Newspapers Limited. Consequently, the Complainant has acquired a valuable reputation and a great deal of goodwill in its trademark.
TSTV reaches approximately 1.4 million homes and has generated revenues in the millions of dollars.
The Respondent registered the domain name tstv.com with Network Solutions, Inc. on September 22, 1998.
When accessed by an internet user, the Respondentís web site at
www.tstv.comgoes to an initial page headed "Slut.com and the girls welcome adults over 18! You are being transported directly to our advertiser and he has what you want."
Within seconds, the user is automatically taken to another web site,
www.cybererotica.comwhich is not owned or operated by the Respondent or its administrative contact, R. Schwartz. Cybererotica.com is a web site containing pornographic content.
For a brief period of time in October, 2000, when an internet user typed in
http://www.tstv.cominto the locator line, he or she was taken immediately to a web site entitled "The Ultimate Adult Site Locator"
Because many browsers automatically assume ".com", if an internet user simply types "tstv " into the locator line, it will assume and search for tstv.com and take the user to the same page.
The Respondent is merely using the Complainantís trademark "TSTV" and the domain name tstv.com as an auto-redirect or redirect to a third partyís pornographic site.
There is no element on the web site of the Respondent that would in any way justify the use of "TSTV" within the domain name in issue. There is no suggestion that the Respondent is commonly known by the name TSTV or tstv.com, or is known by a name similar to the domain name.
The Respondent has no registration for the trademark "TSTV", or any confusingly similar mark, in the United States or elsewhere.
There is no relationship between the Respondent and the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or apply for any domain name incorporating any such mark. The Complainant has given no rights to the Respondent in respect of the domain name.
The Respondent has no rights or legitimate interests in the domain name at issue.
For the purposes of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) "Circumstances indicating that the registrant has registered or has acquired the domain name 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 its own documented out-of-pocket costs directly related to the domain name;
(b) the registrant 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 it has engaged in a pattern of such conduct;
(c) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, the registrant 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 its web site or location or of a product or service on its web site or location."
The Respondent has registered and is using the domain name tstv.com, which substantially replicates the Complainantís registered TSTV trademark. The Respondent registered the domain name on September 22, 1998, four (4) months after the Complainant had started to use its trademark in association with a television broadcast.
Given the extent of the Complainantís promotion and advertising of TSTV from the date of its creation, it cannot reasonably be argued that the Respondent or its administrative and billing contact, R. Schwartz, could have been unaware of the complainantís use of and trademark rights vested in TSTV when registering the domain name.
This seems even more unlikely when Mr. Schwartzí other business activities are taken into consideration.
R. Schwartz is the administrative and billing contact for the Respondent, and for Bendalite, the owner of the domain name and web site erealestate.com. Mr. Schwartz and Bendalite are in the business of registering, purchasing and selling domain names for commercial purposes. Mr. Schwartz and Bendalite also offer to send traffic to web sites through targeted click-through to help the owner of the site get it going, in exchange for stock in the ownerís company.
It is apparent from the content of the erealestate.com web site that R. Schwartz is contemptuous of the rights of trademark owners and is a vocal supporter of cybersquatters. (As alleged evidence of this the Complainant appended web pages entitled "A Message from the King Himself" and "Cybersquatting?").
Over 3000 domain names that R. Schwartz (or one of his companies, like Virtual Dates, Inc. or Bendalite) claims to own are listed on the web pages of the erealestate.com site. As admitted by the author of these web pages, "most of [these] sites have little or no content". Many of these sites (and domain names for them) simply auto-redirect or take the user to another domain name or web site that is owned by an unrelated third party. Furthermore, many are pornographic in nature.
For example, ejaculate.com, dirtysites.com and lovefest.com are domain names registered in the name of either Virtual Dates, Inc. or Bendalite that auto-redirect the user to www.unfaithful.com, which is not owned by R. Schwartz or any of his companies, and is a pornographic web site.
Like these other domain names owned by R. Schwartz or one of his companies, the domain name in issue (tstv.com) is simply being used to re-direct traffic to a pornographic web site which is owned by another - in this case,
www.cybererotica.com. The Respondent is simply "squatting" on the domain name tstv.com and is using it to re-direct traffic to a pornographic web site that has nothing to do with the name.
There is no other apparent purpose or objective which can be attributed to the Respondent with regard to its use of the domain name tstv.com. There is no apparent intention on the part of the Respondent to build a web site and brand name around this domain name. As such, the Respondent is using the domain name in bad faith.
Tstv.com is not the only domain name of the Respondent that auto-redirects a user to cybererotica.com. Other domain names registered by R. Schwartz or one of his companies, such as adult-channel.com and filthy.com, also do this.
The connection of the Respondentís web site with "adult" offerings clearly tarnishes or dilutes the Complainantís mark. This constitutes an aggravating element in the assessment of the bad faith with which the domain name is being used by the Respondent.
The registration of the domain name tstv.com was clearly part of a pattern of conduct in that it was registered by the same entity which also registered a number of other domain names that serve no other purpose than to re-direct traffic to a pornographic web site. This pattern of conduct prevented the Complainant from reflecting its trademark in a corresponding .com domain name. This pattern of conduct can only be a tactic to embarrass the trademark owners, like the Complainant.
The domain name tstv.com was adopted by the Respondent with the intent to exploit the Complainantís goodwill in the mark.
By using the domain name, the Respondent is intentionally attempting to attract for commercial/financial gain, Internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or of a product or service on the registrantís web site.
As indicated above, there is no evidence of the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or anything other than a site by which to attract and re-direct traffic.
The Respondent has not been commonly known (or known at all) by the domain name tstv.com, and has acquired no trademark rights.
The Respondent is not making a legitimate non-commercial or fair use of the domain name, and is using it with intent for commercial gain misleadingly to divert consumers (including individuals who are looking for the Complainant) to its and other pornographic web sites. As a result, the Complainantís trademark is being diluted and tarnished, and the goodwill that the Complainant has established to date is being irreparably damaged.
Although internet users would ultimately discover no business relationship between the Complainant and the Respondent, the latter would have gained web site traffic from the use of the mark TSTV.
Like the Respondent in Singapore Airlines Limited v. Robert Nelson (trading as Pacific International Distributors (WIPO Case D2000-0644 decided August 29, 2000), the Respondent in these proceedings is using the domain name for commercial gain, hoping that persons surfing the Internet, seeking information on the Complainantís services, will be diverted into the Respondentís site.
It can reasonably be presumed that the Respondent has entered into commercial agreements whereby he benefits financially from visitors to his site who are
re-directed to the pornographic web site.
The presence of the trade-mark TSTV.com in the domain name is therefore a key factor in the financially-driven attempt to draw internet users, some of which will be browsing for the Complainantís web site, to the Respondentís web site.
Therefore, the Respondent is taking a free ride on the goodwill and reputation of the Complainantís TSTV trademark.
The present situation is also similar to that found in Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case D2000-0102 decided April 18, 2000), where the WIPO Panel ordered cancellation of the domain name "nokiagirls.com". The Complainant was a manufacturer of cell phones known internationally. The domain name was connected to a web site displaying a menu with certain word links. There was also a picture of a womanís face and shoulder and a list of countries grouped by continents. When one clicked on the link "MORE", two additional pages were displayed, with one picture each of girls in blue uniforms. The loading of the web site caused a rotating banner to appear. The banner contained hyperlinks to other sites. The Panel concluded that the domain name had been registered and used in bad faith because the registrant was using the domain name to create traffic to its web site in a financially driven attempt to draw Internet users to its web site. Although in this case the registrantís web site did not contain pornographic material, it nevertheless created an impression that the site was adult-oriented Ė which "constitute[d] an aggravating element in the assessment of the bad faith with which the Domain Name is being used". In the case at hand, the registrantís web site and third party sites to which a user is re-directed or automatically directed from the registrantís web site, are adult-oriented sites.
In National Football League Properties, Inc. et al. v. One Sex Entertainment Co., (WIPO Case D2000-0118 decided April 17, 2000), the Respondent used the domain name "chargergirls.net" to direct Internet users to its pornographic website "onesex.com". The Panel in this case concluded that, the Respondent had therefore used the name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to whether the Complainant was the source, sponsor, affiliate, or endorser of its web site. "Although Internet users might soon discover the unlikelihood of a business relationship between Complainant and Respondent, Respondent would have gained website traffic from the establishment of the link via the "chargergirls.net" domain name."
In view of the above, it is submitted that the Respondentís use of the domain name tstv.com (1) intentionally misleads customers for commercial gain, and (2) tarnishes the Complainantís well-known mark TSTV (see Policy 4(b)(iv) and 4(c)(ii)).
The only possible conclusion must be that the Respondent registered and is using the domain name tstv.com in bad faith.
The Respondent States:
Prior to the receipt of this complaint, Respondent had no knowledge of the existence of Complainant, TORONTO STAR NEWSPAPERS LIMITED or any trademarks owned by the Complainant, or any claim that the Complainant may have as to Respondentís domain tstv.com.
Respondent is in the business of warehousing and utilizing domains primarily of a generic nature and at no time has Respondent sought to sell or transfer any such domains to any other party including the Complainant herein.
Respondent originally registered the domain name tstv.com on September 22, 1998, after having purchased it from a third party for valuable consideration and has utilized the domain continuously since that date as a link to sites not owned by the Respondent, which sites deal with a trans-sexuals and trans-vestites which commonly utilize the initials "tstv". (The Respondent appended to the complaint many examples of such use).
Respondent has never utilized the domain name tstv.com to sell pre-recorded video cassettes, video laser discs, digital video discs, audio cassettes, compact discs, CD-ROM discs, or clothing, namely shirts, jackets, sweaters, pants, hats, caps or hat visors. The domain name is not utilized to provide television broadcasting services, telecommunication services, or interactive electronic communication services, namely, the development, production, broadcast, recording, or distribution of programs for television, computers or display terminals.
The Complainantsí mark is not distinctive and was only registered in Canada on June 19, 1998. To the best of Respondentís knowledge, no other marks for TSTV are registered by any party
The Complainant registered "tstv.ca" on April 27, 2000. A search of
the name of "tstv" on ALTA VISTA reveals that Complainantís web site is listed as Number 2., that Respondentís site is not even listed, and that there are a number of "tstv" web sites that lead the user to adult sites featuring trans-sexuals and trans-vestites. (Examples were appended to the Complaint).
There are other "tstv" domains owned by neither the Complainants nor the Respondent. These include; tstv.de, tstv.cc and tstv.tv.
Respondent denies the allegations contained in the complaint and specifically denies that it registered or has ever used the domain name "tstv.com" in bad faith. Respondent, Virtual Dates, Inc. owns numerous domain names, some of which are linked to adult websites. At no time has Respondent utilized a trademark TSTV. Respondent specifically denies:
(a) that it registered or acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant for ANY consideration, valuable or otherwise. Complainant cannot show or even allege that Respondent has EVER offered the domain name to any other party for any consideration.
(b) that the Respondent has registered the domain name in order to prevent Complainant from reflecting or utilizing its trademark of TSTV in its own domains, nor has Respondent engaged in a pattern of such conduct. On the contrary, Respondent paid a valuable consideration over and above the registration costs for the ownership of "tstv.com" as a valuable link to the applicable adult web sites, having nothing whatsoever to do with complainant, its business or its web site.
(c) that the Respondent has registered the domain name primarily to
disrupt the business of the Complainant, as the Respondent had no knowledge of the existence of the complainant or its Canadian trademark at the time of the registration of tstv.com.
(d) that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainantís mark primarily because Complainantís mark was not famous, it was registered in Canada only, and the common usage of the letters "tstv" was not involved with Canadian radio or television. Respondent could not have known of complainantís use of the mark TSTV as it was limited to the Toronto area of Canada, and Respondent is located in Boynton Beach, Florida.
Complainant points out various other domain names owned by Respondent including "ejaculate.com", "dirtysites.com", "adult-channel.com", "filthy.com" and "lovefest.com", none of which are alleged trademark infringements. Presumably, the fact that Respondent owns various other domain names would tend to make the Respondent a cybersquatter. However, Complainant fails to show how any of these other domain names are relevant to this case or may be considered to be cybersquatting. Contrary to the complainantís allegations, the adult web sites that are linked to "tstv.com" are directly related to the common usage of the term "tstv".
Complainant attempts to compare this case to Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, (WIPO Case D2000-0102), by alleging that the trademark TSTV is as famous as NOKIA and therefore the same rules should apply. However, that case was an obvious play on a very famous trademark, whereas in the instant case, the trademark is not famous, and there is a direct
tie-in to the content of the links to the subject web site. The same is true for the Chargergirls case cited. Complainants are also further confused by the domain name "erealestate.com". There are a number of websites including, afternic, great domains, hit domains, and others that are in the business of selling domain names. Complainants would have this panel believe that they are all cybersquatters because they sell domain names. The Internet has been rightly termed the "real estate investments of the future." Each website becomes similar to real property that may go up or in some instances go down in value. Respondent owns the domain name "erealestate.com" for the purpose of BUYING domains and appraising the values of otherís domains. A review of the Respondentís articles appended by the Complainant to the Complaint shows that it is in direct contradiction to the allegations made by the Complainants. There is no attempt by Respondent to sell domains at erealestate.com. Complainants have been unable to show any basis for establishing the Respondent as a cybersquatter. Nor can Complainants exhibit evidence of "bad faith" registration and use under the policy, paragraph 4(b)(I).
In the case of Digitronics Inventioneering Corporation vs. @Six.Net Registered (WIPO Case D2000-0008) where the facts were similar to this case, the Complainant asserted that the Respondent has no trademark or other intellectual property rights to the domain name; the domain names are not the legal names of the Respondent; the Respondent has no prior lawful use of the domain names; the Respondent is not doing business under the domain name "SixNet.Com"; the Respondent is not using nor are there any demonstrable preparations to use the domain name "SixNet.Com" in connection with a bona fide offering of goods or services; the Respondent as an individual, business or other organization is not commonly known under the domain names; and the Respondent does not have a legitimate non-commercial fair use of the domain names. All of these allegations are contained in the instant complaint. "SixNet.Com" indicated that it had been using the domain name since it was registered in the beginning of 1996 as its website as well as other Internet location addresses. In that case, the panel held that the Complainant had failed to bring itself within paragraph 4(a)(ii) of the Resolution Policy as interpreted by paragraph 4(c)(ii). The Complainant failed to prove that Respondent had no rights or legitimate interest in respect to the domain name.
The Complainants are required pursuant to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy to prove each of the following three (3) elements:
1. That the domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2. That the domain holder has no "rights or legitimate interest in respect to the domain name" and
3. That the domain "has been registered and is being used in bad faith".
The Administrative Panel further held that as to requirement 3, the Complainants are required to prove not only that the domain has been registered in bad faith, but that it is also being used in bad faith.
In the case at hand, it is obvious that the Complainantsí trademark "TSTV" and Respondentís domain name "tstv.com" are virtually identical. However, there is nothing independently famous about the Complainantsí trademark. The term "tstv" is a generic term which has been defined above. Thus, even though the domain is similar to the trademark, no confusion is generated.
As to the second element, the Respondent alleges and can prove that it has "rights or a legitimate interest in respect to the domain name" in that it has been used in its business and that the name "tstv.com" is appropriate to its use. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thorton, d/b/a Machines & More (WIPO Case D2000-0006), Telaxis Communications Corp. v. William E. Minkle (WIPO Case D2000-0005). The fact that some other domain names registered by the Respondent may be identical to trademarks owned by others is, in itself, insufficient evidence of the intent to profit from or otherwise abuse such trademark rights.
Complainants cannot provide any evidence to indicate that Respondent knew or should have known of its trade name use or trademark registrations such as a direct relationship or wide reputation of or extensive publicity in connection with Complainantsí trade name or trademarks. Respondent affirmatively alleges that it had no such knowledge when registering the domain name "tstv.com" nor does it have such knowledge in the use of that domain.
There is nothing in the Policy that requires a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights. See Allocation Network GmbH v. Steve Gregory (WIPO Case D2000-0016).
Finally, there is no evidence in the complaint or in the attachments thereto that Respondent engages in a pattern of registering the trademarks of others as domain names. Nor does it appear from the attachments that Respondent registered the domain name "tstv.com" for the purpose of disrupting the business of a competitor. Nor can the Complainant show that Respondent intentionally attempted to create a likelihood of confusion with Complainantsí mark. See Avnet, Inc., v. Aviation Network, Inc. (WIPO Case D2000-0046) and Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., (WIPO Case D2000-0047).
6. Discussion and Findings
To succeed in its complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar Trade Mark
It is prima facie obvious that the Domain Name is identical or confusingly similar to Complainant's trademark.
Respondent's Rights or Legitimate Interests
The Panel is not satisfied that the Complainant has shown that the Respondent has no rights or legitimate interests in the Domain Name. Respondent has shown that TSTV is recognized as an abbreviation for "Transsexual and Transvestite" and that it is so used in the relevant section of the pornographic industry. Accordingly, the Respondent appears to have used the domain name in connection with the bona fide offering of such services to customers in the United States of America and possibly elsewhere. Respondent has provided corroborated reasons for his adoption of the domain name and of his continued use of it in the bona fide conduct of his business. The Policy does not aim to adjudicate between genuine conflicts between parties in different field of activity and different territories.
Use and Registration in Bad Faith
In any event, even if the Panel were wrong in this regard, the Complainant has failed to establish bad faith registration or use of the domain name by Respondent.
As pointed out above Respondent has arguably legitimate reasons for the adoption of the domain name and appears to be using the TSTV sign in a generic manner in a different field to the Complainant and in a different territory.
There is no evidence that Respondent registered the name with the intention of selling it to Complainant or to a competitor of Complainant or that it did so in order to prevent Complainant from reflecting its trademark in a domain name. Speculation in generic domain names does not constitute bad faith. The Complainant has failed to cite a single other example of a domain name registered by the Respondent which is not generic and which is alleged to contain the trademark of another third party. There is also no actual evidence that the Domain Name in question in this case was ever offered for sale by the Respondent to anyone.
The Respondent is not a competitor of Complainant and there is no evidence that Respondent's registration was registered for the purpose of disrupting the Complainantís business. The Complainant has not proved that the US Respondent was aware of the Complainantís mark prior to acquisition of the Domain Name. Indeed the Respondent specifically denies knowledge of the Defendant at the time it acquired the Domain Name. Given that the Respondent is based in the United States and not Canada, this is not inconceivable.
Finally, the TSTV mark is not a particularly distinctive mark and is not world famous. Indeed there is no evidence that the Complainant has any reputation in the mark outside of Canada. Further, there is no evidence that Respondent has used the domain name to attract users to the web site by creating a likelihood of confusion with Complainantís mark.
The Complaint is dismissed and transfer of the domain name is refused.
Gary N Bouchard
Dated: February 6, 2001