WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Star Newspaper Ltd. v. Elad Cohen
Case No. DTV2000-0006
1. The Parties
The Complainant is Toronto Star Newspapers Limited a corporation incorporated in the province of Ontario and having its head office and principal place of business at One Yonge Street, 6th Floor, Toronto, Ontario, Canada M5E 1P9 and it is represented by Mrs. Diane M. LaCalamita of Deeth Williams Wall LLP.
The Respondent is Mr. Elad Cohen of 28 Betsalel Street, 16th Floor, Ramat Gan, Israel 52521.
2. The Domain Name and Registrar
The disputed domain name is tstv.tv.
The Registrar of the domain name as at the date of the Complaint is .tv Corporation International of 130 West Union Street, Pasadena, California 91103, USA ("dotTV").
3. Procedural History
On November 23, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") in hard copy pursuant to the Uniform Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules").
The Complainant stated that a copy of the Complaint was sent to the Respondent by courier on November 20, 2000.
Upon receipt of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on November 24, 2000, with a copy being sent to the Respondent.
The Center sent a Request for Registrar Verification to dotTV on November 30, 2000 by email. dotTV responded to the Center’s request by email on December 1, 2000 verifying: (1) that it had received a copy of the Complaint; (2) that the disputed domain was registered with it; (3) that the Respondent Elad Cohen was the named registrant of the disputed domain name; (4) that the Respondent’s contact details were correct,; (5) that the Policy applied in relation to the domain name tstv.com, and (6) that the current status of the domain name was active.
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Complainant on December 4, 2000.
A response to the complaint was received by the Center via e-mail on December 25, 2000 and in hard copy on December 29, 2000. It was acknowledged on December 27, 2000.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on January 9, 2001. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel on January 9, 2000. The Panel received e-mail copies of the Complaint and the Response on January 9, 2001, and hardcopy of the file on January 10, 2001.
All other procedural requirements appear to have been satisfied.
4. Factual Background
Activities of the Complainant
The following information was asserted as fact by the Complainant:
Since May 26, 1998 the Complainant has offered, operated, advertised and promoted a television broadcasting channel known as TSTV (Toronto Star TV) which is distributed on cable in Ontario, Canada. Since April, 2000 TSTV has been available worldwide via the Internet Webcast through the two domains tstv.ca and torontostartv.com.
The domain name tstv.ca, was registered with the Canadian Internet domain name registrar on April 27, 2000 (and modified on August 8, 2000), and torontostartv.com was registered with Network Solutions, Inc. on October 21, 1998.
TSTV reaches approximately 1.4 million homes and has generated revenues in the millions of dollars.
The Complainant’s trademark
The Complainant owns the trademark TSTV registered in Canada under No. TMA 496452 with a registration date of June 19, 1998. The Complainant maintains that it has used this trademark in Canada on the goods and services for which it is registered since May 26, 1998.
Activities of the Respondent
The following information was asserted as fact by the Respondent:
The acronym tstv is a generic or descriptive term commonly used in the transsexual (transvestite) community for transvestite sexual activity.
When the domain name in question, tstv.tv, was registered the Respondent had no knowledge of the Complainant’s rights or trademark in that domain name.
The Respondent tried to register tstv.com, but found that it was already registered and used for an adult entertainment website owned by cybererotica.
The Respondent is not using the name tstv.tv as yet for an active website.
The Respondent is currently operating a website under the name tstv.tv, offering services to the transvestite community.
[NB. These last two diametrically opposed assertions are discussed below under ‘Discussion and Findings’.].
5. The Parties’ Contentions
The Complainant states, in his own words, as follows:
"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 wares 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 trade-mark."
The Respondent states that it is clear from the facts that he is supplying services in a bona fide way, and is not trying, in any way to capitalize from the Complainant’s rights. He did not register the disputed domain name in bad faith, and he is not using it in bad faith. He has not attempted to capitalize on the Complainant ’s trademark rights and the Complainant can produce no evidence to that effect.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. These are the only matters to be considered and the Panel will now consider in detail each of the three elements in paragraph 4(a):
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights"
There is no doubt that the domain name tstv.tv and the trade mark TSTV are identical, so the Panel finds that paragraph 4(a)(i) has been proved.
Paragraph 4(a)(ii) provides that:
"(ii) you have no rights or legitimate interests in respect of the domain name"
There is no doubt that the Complainant has a valid interest in the acronym TSTV. Its trademark has been registered for two and a half years, and although no specific evidence of the Complainant’s television channel has been adduced, the Panel has visited its website and is prepared to accept that the Complainant’s claims in this regard, whilst noting that the 1.4 million homes that its is said to reach represents a comparatively small number in a total of over 29 million people which is the population of Canada.
There is also little doubt that the acronym TSTV is, at the same time, an abbreviation of the term ‘transsexual/transvestite’. An internet search by the Panel for TSTV revealed 66 hits, 14 of which could be clearly identified as referring to this type of activity, a majority of them from Germany or the Czech Republic, and there were others that could have been.
It should in fairness be noted that 15 hits in the above search related to the Complainant’s television services. However 8 hits, including the very first on the list, referred to Tulane University. This seat of learning is in New Orleans, Louisiana, USA and according to its website it has a fully functioning TV station TSTV (Tulane Student Television) which broadcasts to approximately 350,000 homes in the greater New Orleans area.
The Respondent has pointed out that the domain name tstv.com is already registered and that it is an active adult entertainment site. The Panel has confirmed this and a WHOIS search reveals that this domain name was said to have been created on September 22, 1998. However the website itself carries a 1996 copyright notice.
The Complainant alleges that the Respondent is not using the name tstv.tv and produces an image of the unused web page to prove it. The Respondent’s reply is contradictory in this respect. In paragraph 4 of the response he states "the respondent is not using the "tstv.tv" domain name as yet for an active website", but in paragraph 8 he states "The respondent is currently operating website under tstv.tv offering services to the transvestite community".
The Panel has confirmed that the latter statement is correct. The site is in use, and it would seem that in between the filing of the complaint and the receipt of the papers the Respondent has activated his website. It is indeed another adult entertainment site, and membership is open to persons aged 18 or over at a cost of $39.95 per month.
The acronym TSTV, meaning ‘transsexual/transvestite’, appears to be in fairly general use, although maybe only by a minority of the world’s population. It may however not be widely known in Canada.
The Panel has no means of knowing what steps – if any – the Complainant has taken in order to protect its trademark rights against the generic use of the term TSTV, or against the website tstv.com, or against Tulane University’s use of the identical name for an identical service. Overall therefore the Panel can only conclude that the Complainant has no monopoly in the term TSTV, and that the Respondent is currently using it and that he has a legitimate right and interest to do so.
Accordingly the Panel finds that paragraph 4(a)(ii) has not been proved.
Since all three sub-paragraphs of 4(a) have to be proved, and having failed to prove paragraph 4(a)(ii) this complaint fails. However the Panel will also proceed to examine paragraph 4(a)(iii), which provides that:
"(iii) the domain name has been registered and is being used in bad faith."
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Respondent issues a number of denials, but not all of them are relevant, as the Complainant only makes a number of specific allegations, each of which will now be examined in turn.
"The Respondent has registered and is using the domain name tstv.tv, which substantially replicates the Complainant’s registered TSTV trade-mark.
The Respondent registered the domain name on June 26, 2000, after the Complainant had started to use its trade-mark in association with television broadcasting, and Internet webcasts. Such webcasts are available to the public worldwide through the Internet."
This appear to be true, and is uncontested by the Respondent. However it is worth noting that the TSTV television station was initially broadcast only to the single Canadian province of Ontario, and that worldwide availability via the Internet did not start until April 2000, which was only a few weeks before the registration of the disputed domain name.
"Given the extent of the Complainant’s promotion and advertising of TSTV from its creation in 1998, it cannot reasonably be argued that the Respondent could have been unaware of the Complainant’s use of and trade-mark rights vested in TSTV when registering the domain name."
The Respondent denies this and, given the relatively small worldwide audience for the Complainant’ s TV station, the Panel is prepared to accept the Respondent’s denial.
"There is no apparent intention on the part of the Respondent to build a web site and brand name around this domain name. The Respondent has not commenced to use the web site associated with the domain."
As we have seen above, although this allegation may have been true when the complaint was filed, it is no longer the case. The site is being used.
"The Respondent has not been commonly known (or known at all) by the domain name tstv.tv, and has acquired no trade-mark rights."
This is only true of the Respondent himself, and is not denied.
"The Respondent is not making a legitimate non-commercial or fair use of the domain name."
This is true and is not denied.
"It is well-established in WIPO administrative panel jurisprudence that bad faith use of a domain name registration does not require the Respondent to have committed a positive act. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, decided February 18, 2000, attached as Annex No. 5, it was held that inaction, such as the passive holding of a domain name registration, can, in certain circumstances be evidence of bad faith."
The Respondent points out that the finding in the Telstra case is that the passive holding of a domain name amounts to bad faith "only in unique circumstances". The Panel disagrees with the use in this context of the word ‘unique’ preferring ‘particular’ or the Complainant’s ‘certain’. But in any case the finding is not relevant, because the particular circumstances which existed in the Telstra case do not exist in the present case, and the Respondent’s holding of the disputed domain name is no longer passive.
"The Respondent had actual or constructive knowledge of the Complainant’s use of the mark TSTV. By letter dated October 26, 2000, the Complainant’s solicitors advised the Respondent of the Complainant’s rights in the mark TSTV and asked the Respondent to stop using the domain name tstv.tv."
"Constructive notice of the Complainant’s trademark, together with a failure to respond to demand letters, can constitute evidence of bad faith registration and bad faith use of a domain name (Marconi Data Systems, Inc.v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090, decided on April 11, 2000)."
The Respondent says nothing in response to the claim that a letter was sent and that he did not reply. The Panel therefore accepts it as being true. However the Panel disagrees that a trademark registration in Canada is ‘constructive notice’ of its existence to a resident of Israel. Furthermore the facts in the INK SOURCE case are not analogous to the present case. To quote from the decision: "One who has constructive knowledge of the trademark, and who contacts the trademark owner and advises the owner that he has acquired a confusingly similar domain name which he intends to use in competition with the trademark owner, has no rights or legitimate interests in the domain name." It will be seen from this that the case refers to a legitimate right or interest and not to bad faith and, despite giving no explanation for his failure to respond to the letter from the Complainant’s legal adviser, there is no evidence that the Respondent contacted the Complainant or made any demands on him.
"The Respondent has attempted to frustrate attempts to contact him in regard to the domain name registration. The email address provided to dotTV by the Respondent has been found by the Complainant to be either out-of-service or otherwise unresponsive. Attempts to send a letter to the Respondent by email on October 26, 2000 and November 1, 2000 were unsuccessful. The messages were returned to the Complainant’s solicitors as undeliverable."
The Respondent’s reply to this allegation is to point out that the e-mails were sent to the wrong address. The evidence points to this being the case, so the Panel accepts this explanation and dismisses the Complainant’s allegation in this regard.
"The contact information provided by the Respondent to dotTV is misleading to the public as it is the Israeli corporate headquarters for a company known as INTERNET PAYMENT SOLUTIONS, who is not named as the registered owner of tstv.tv."
The Respondent makes no comment on this allegation, but since he is an individual the Panel can find nothing in it to constitute a breach of his registration agreement with Dot.TV. The Complainant quotes a Decision by a Panel of the National Arbitration Forum that the failure to provide current and responsive contact information can be evidence of bad faith (Seiko Epson Corporation et al. v. Distribution Purchasing & Logistics Corp., Forum File No. 3000094219, decided on April 5, 2000). As with so many NAF decisions, this one provides very few facts to justify its finding, and it is impossible to say what was the evidence in that particular case that the Panel was presented with and which led it to this finding.
However in the present case, the Panel finds that the Respondent’s actions in this respect are not reprehensible and do not, in absence of any other evidence, constitute an act of bad faith.
The Panel concludes, overall, that the Complainant has not made out a strong enough case to justify the charge of ‘bad faith’, and that the Respondent has therefore not registered and used the disputed domain name in bad faith.
For these reasons, the Panel decides that although the domain name registered by the Respondent is identical to the mark in which the Complainant has rights, the Respondent does have rights and legitimate interests in respect of it, and that the Respondent’s domain name was not registered nor is it being used in bad faith.
David H Tatham
Dated: January 22, 2001