WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PowerTV Inc v. PowerNet Internet Group

Case No. D2001-0831

 

1. The Parties

The complainant is PowerTV Inc ("the Complainant"), a corporation registered in the State of California, United States of America, having a principal place of business at 20833 Stevens Creek Boulevard, #100, Cupertino, California 35014, U.S.A. The respondent is PowerNet Internet Group ("the Respondent") whose address is 501 Allied Kajima Building, 138 Gloucester Road, Wanchai, Hong Kong, S.A.R., China. That is the address of the Respondent as contained in the registration details. The administrative and technical contact provided for the domain name registered by the Respondent is Samuel Kam of the Respondent at the above address.

 

2. The Domain Name and Registrar

The domain name, the subject of the complaint, is <powertv.net> ("the domain name"). The registrar with which the domain name is registered is <dotster.com> ("http://www.dotster.com").

 

3. Procedural History

A complaint ("the Complaint") was filed with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Signs, Names and Numbers ("ICANN") on October 24, 1999, and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complaint was received by email on June 26, 2001, and by hard copy on June 29, 2001.

On June 28, 2001, the Center acknowledged receipt of the Complaint.

On July 2, 2001, the Center sent to the Registrar a request for verification of the registration of the domain name. The domain name was registered with <dotster.com> on May 19, 1999. The registration agreement that applies to the domain name provides that the Policy applies and that the registrant agrees to be bound by the Policy. On July 5, 2001, the Center received the Registrar verification response confirming the registration of the domain name with <dotster.com>, but stating that the Registrar had not received a copy of the Complaint.

There was then some communication with the Complainant on July 2, 2001, about the required payment to accompany the Complaint together with communication on July 9 and 11, 2001, about the fact that the Registrar did not receive a copy of the Complaint. On July 16, 17 and 19, 2001, there was communication about a mistaken belief that the domain name had in fact been transferred to the Complainant, which was not the case.

By July 24, 2001, the Center confirmed that all formal requirements had been complied with (including the payment of the correct amount for fees). The Panel is satisfied that those formal requirements were met. The Registrar also confirmed that, by agreement, the Respondent agreed to be bound by the Policy. On July 24, 2001, the Center issued the Notification of Complaint and Commencement of Administrative Proceedings, which were forwarded to the Respondent by facsimile to the fax number included in the registration details and also by courier.

On July 24, 2001, the Respondent confirmed receipt of the said Notification.

On August 11, 2001, a response from the Respondent was received by the Center ("the Response"). The hard copies with annexures were received on August 15, 2001.

On August 13, 2001, the Center confirmed receipt of the Response.

On August 17, 2001, the Center issued a Notification of Appointment of Administrative Panel and projected decision date. This notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Annabelle Bennett.

 

4. Factual Background

The Complainant has asserted the following facts, which have not been disputed by the Respondent. The Panel finds these facts proved.

The Complainant was incorporated in the State of California, United States of America on June 29, 1994, and has been operating as a business and selling goods and services under its trade name since that date. The Complainant has registered its trademark, POWERTV, on the principal register of the United States Patent and Trade Mark Office ("USPTO"). The trademark was filed as an intent-to-use application on February 17, 1995, and was first used in commerce on July 17, 1995. It was registered by the USPTO on February 25, 1997. An additional trademark application for POWERTV was filed on February 17, 1995, and registered by the USPTO on July 15, 1997. The goods and services for which the trademark, POWERTV, have been registered are integrated circuits and operating system software. The Complainant has registered trademarks for POWERTV in "several other countries around the world". It is not asserted that the trademark is registered in Hong Kong. The Complainant asserts that, as at the date of the Complaint, it has begun use of POWERTV "in Asia" but only specifies Japan, where a trademark was registered in 1999. The Complainant states that it plans to continue its expansion "within Asia" without further detail. The Complainant states that it commenced using its trade name and trademark in advertisements, goods and services from as early as 1995. The Complainant has registered and is using, in connection with its offering of goods and services, the domain name <powertv.com> which was registered on October 28, 1994. That domain name has been continually used in connection with goods and services under the Complainantís trade name and trademarks. It also resolves to a website maintained by the Complainant and on which the Complainantís trade name and trademarks are prominently displayed. In the fiscal year 1999 and the first two quarters of fiscal year 2000, the Complainant sold more than $US12.7 million worth of goods and services.

On November 30, 1999, on the letterhead of Scientific Atlanta Inc, a letter was written to the Respondent asserting that the domain name <powertv.net> infringes the US trademark held by the Complainant said to be a subsidiary of Scientific Atlanta Inc. No response was received to that letter. On May 10, 2000, an email was sent to Mr. Kam offering to purchase the domain name for an amount equal to the legitimate and documented costs in registering the domain name. No response was received.

The Respondent asserts the following facts and has provided evidence to support them. They have not been disputed and the Panel finds those facts proved.

The Respondentís trade name, PowerTV, is registered in Hong Kong and has been so registered since September 1, 1999. The Complainant has not been incorporated in Hong Kong nor has its registered trademark, POWERTV, in Hong Kong. The Complainant is not, as at the date of the Response, operating in Hong Kong. The Complainantís product is an integrated circuit and operating system software, whereas the Respondentís product is a software utility based on public TV advertising models to offer internet access subsidized by advertising and royalties paid by advertisers. The Respondent conducts its business under the names PowerNet, PowerTechware, PowerNetIX, PowerAD, PowerTV and <powertv.net>. The Respondentís product which has been the subject of an investment memorandum in 1999 and has been in development since that time, has not been launched due to a downturn in current market conditions.

While <powertv.net> URL only resolves to the Respondentís site "http://www.powertechware.com" the Respondent previously had a <powertv.net> logo prominently displayed on the site with the words "coming soon". A launch has been postponed until funding issues are resolved.

 

5. The Partiesí Contentions

(a) The Complainantís Contentions.

The Complainant submits that paragraph 4(a) of the Policy applies, that is:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

Confusingly similar - paragraph 4(a)(i) of the Policy

Under this ground, the Complainant contends:

(a) The domain name is confusingly similar to the Complainantís trade name and its trademark POWERTV. The domain name incorporates all relevant portions of the trademarks and trade names of the Complainant in the same order as that used by the Complainant.

(b) The only difference between the domain name <powertv.net> and the trade name of the Complainant is the domain extension.

(c) The only difference between the domain name <powertv.net> and the POWERTV trademark of the Complainant is the domain extension.

(d) The only difference between the domain name and the Complainantís registered domain name for <powertv.com> is the domain extension, which may be easily typed in error by a person seeking to view the Complainantís website.

No Legitimate Rights or Legitimate Interests in the Domain Name - Paragraph 4(a)(ii) of the Policy

Under this ground, the Complainant contends:

(a) The domain name incorporates all relevant portions of the trademarks and trade name of the Complainant in the same order as that used by the Complainant.

(b) The Complainant has no knowledge of any use of or interest in the term, POWERTV, by the Respondent prior to the Respondentís registration of the domain name; is the subject of this Complaint; and, to the Complainantís knowledge, the Respondent has not been commonly known by the domain name or any names similar to the domain name.

(c) The domain name resolves to a website having the URL "http://www.powertechware.com", and maintained by PowerNet Internet Group. Neither the website nor any link to other websites contained therein displays the name POWERTV, nor refers to any tv-based services.

(d) While the Respondent does offer goods and services on its website, <www.powertechware.com>, neither the website nor any link contained therein used the POWERTV or <powertv.net> marks, or offers any goods or services under the name "PowerTV".

(e) To the Complainantís knowledge, the Respondent does not use, and has not made preparations to use, the disputed domain name in connection with a bona fide offering of goods and services.

(f) The Respondent has, to the knowledge of the Complainant, made no use or preparations to use the disputed domain name for any legitimate non-commercial use or fair use.

The domain name has been registered and is being used in bad faith - Paragraph 4(a)(iii) of the Policy

Under this ground, the Complainant contends:

(a) It is likely that the Respondent was or should have been aware of the potential for confusion between the domain name and the Complainantís trade name and trademarks given the widespread use of the Complainantís trade name (PowerTV, Inc.), and its trademark (POWERTV); the world wide access to the Complainantís website on which its trade name and trademarks are prominently displayed; the similarity of the domain name and the domain names that have been registered and maintained by the Complainant; and the volume of sales of goods and services under the Complainantís trade name and trademarks.

(b) The domain name, <powertv.net>, does not resolve to any website or on-line presence related to the name "PowerTV", and there is no indication that preparations for any such use has been made by the Respondent.

(c) Based on the Complainantís investigation, the Respondent neither registered nor ran any company within Hong Kong or elsewhere using the name "PowerTV" until 1999, which is four years after the Complainant first used the trademark POWERTV in July 1995, and the registration date for the mark, POWERTV, was February 25, 1997. According to information provided by <dotster.com>ís database, the Respondent did not register the disputed domain name <powertv.net> until May 19, 1999. Only subsequent to the Respondentís domain name registration, on September 1, 1999, four years after the Complainantís registration of POWERTV, did the Respondent even register any business entity corresponding to the name of PowerTV.

(d) On November 30, 1999, the Complainant mailed correspondence to the Respondent, informing the Respondent of the similarity between the domain name and the Complainantís trade name and trademark and asked the Respondent to cease and desist its use of the disputed domain name.

(e) The Respondent ignored the Complainantís correspondence.

(f) On May 10, 2000, the Complainant transmitted a second communication to the Respondent, informing the Respondent of the Complainantís plan to initiate arbitration under the rules of ICANN. In this communication, the Complainant did make a good faith effort to avoid arbitration by offering to purchase the domain name for all legitimate out-of-pocket expenses incurred by the Respondent.

(g) On May 11, 2000, the Complainant received a response from the Respondent stating its refusal to stop using the domain name. It proceeded to make a purported offer to sell the domain name; however, it gave no indication of amount except to state that they would require a "considerable amount" of money from the Complainant.

(h) The fact that the domain name is confusing similar to the Complainantís trade name, trademarks, and registered domain name, the fact that the domain name, <powertv.net> does not resolve to any website or on-line presence related to the name "PowerTV", and the lack of a good-faith response to the Complainantís inquiry to purchase the domain name demonstrates that the Respondent has registered and is using the disputed domain name in bad faith.

(b) The Respondentís Contentions

A number of the Respondentís contentions were assertions of fact, which have already been dealt with.

Confusingly similar - paragraph 4(a)(i) of the Policy

Under this ground, the Respondent, in addition, contends:

(a) The Respondent owns the rights to "PowerTV" in Hong Kong.

(b) The Complainantís product is an integrated circuit and operating system software, whereas, the Respondentís product is a software utility based on public television advertising models to offer internet access subsidized by advertising and royalties paid by advertisers.

(c) The Complainant is not operating in Hong Kong. There is no presence nor visibility of such a product in Hong Kong.

(d) The Complainant has registered the domain name, <powertv.com>. The Respondentís product is an internet and network product in which the domain name which it holds reflects its business and group names, PowerNet, PowerTechware, PowerNetIX, PowerAD, PowerTV: <powertv.net>.

(e) The Complainantís product is totally different to that of the Respondent.

(f) The Complainantís sales figures are irrelevant to the Respondentís rights as owners of the domain name. The Respondentís product is not complete. The Respondentís product is not officially launched but has been in development since 1999. The launch has been delayed due to the downturn in the current market and Internet sectors.

(g) Internet users are aware of the differences in domain prefixes. They are able to differentiate .com with .net with .org, .tv, .biz and numerous other prefixes. One example is "idt.com" and "idt.net". These are two totally different companies.

No Legitimate Rights or Legitimate Interests in the Domain Name - Paragraph 4(a)(ii) of the Policy

Under this ground, the Respondent, in addition, contends:

(a) The Complainantís product is an interactive television product whereas the Respondent product is purely an Internet product in which its ".net" prefix reflects its true identity. The Respondentís target segment is PC users of the Internet community.

(b) The Respondent has the legal right to the use of the ".net" prefix and its name is identical to the Respondentís business registration and identity.

(c) During the process of registration, the Respondent had the intention to use the name "PowerTV.net" only. Even if <PowerTV.com> were available, it is not a name that reflects the business nature of the Respondentís product. The Respondentís product is an Internet product and it had no intentions at all to infringe the Complainantís interactive television product.

(d) Due to the current funding issues, the Respondent is unable to proceed with its project at this moment. However, the product does use its PowerTechware server technology.

(e) The Respondent has made significant preparations to use this domain name since its registration in 1999; from business plan, company registration and corporate image to technical plan to software source code.

The domain name has been registered and is being used in bad faith - Paragraph 4(a)(iii) of the Policy

Under this ground, the Respondent, in addition, contends the following:

(a) The Respondent has never had any intentions to use the domain name in bad faith. The Respondentís product is totally different and is geared towards the consumer markets. The Complainantís product is a niche product catering to the cable industry. As stated in the Complainantís website, they are a provider of iTV software solutions for the cable industry. The Respondentís product is an Internet PC product and the network product which reflects its prefix ".net".

(b) The Respondentís products are not competing with those of the Complainant.

(c) By May 2000, the Respondent had made significant investments into its product. The Complainant did send the Respondent an email stating that it was offering to purchase the domain name. The Respondent has never had the intention of selling its domain name for commercial gain.

(g) The Respondent has made significant investments into its product. At one point, the Respondent had investors willing to invest $US2 million into its PowerTV.net product and technology.

(h) From the beginning of the registration of the Respondentís domain name, the Respondent never had any intention to use the name in bad faith. Many of the Respondentís group companies and subsidiaries use the "Power" names, such as PowerTechware, PowerAD and PowerNetIX. The PowerTV.net product and concept is unique and has been solely developed by the Respondent whose target market is PC users on the Internet community.

A number of the Respondentís contentions are relevant to each of the elements of paragraph 4(a) of the Policy.

 

6. Discussion and Findings

Paragraph 4(a)(i) of the Policy requires that the Complainant must prove that each of the three elements of paragraph 4(a) are present.

Identical to or Confusingly Similar

The Panel is satisfied that the domain name <powertv.net> is identical to or confusingly similar to the registered trademark of the Complainant. The domain name incorporates all relevant portions of the trademark and trade names of the Complainant.

Rights and Legitimate Interests in Respect of the Domain Name

Many of the matters asserted by the Complainant result from its lack of knowledge of the affairs of the Respondent and have been answered. Otherwise, the Complainant points to the fact that the domain name resolves to a website which does not itself currently display the name POWERTV, nor refer to any tv-based services.

Considering the Respondentís contentions as a whole and referring to the facts relied upon therein, as supported by evidence, the Panel notes, in particular, the domain name was registered on May 19, 1999; that the Respondentís trade name, PowerTV, is registered in Hong Kong as a business name; the business name registration first occurred on September 1, 1999, and has been renewed annually; the Respondent has, since 1999, been developing a product under a name identical to its business registration name. The Respondent also relies upon the legitimacy of its use of the domain extension .net and the link between that and the product developed by the Respondent in accordance with the commercial area in which it works. These are all matters going to a legitimate interest in the domain name.

The Panel is of the view that the Complainant has not proved that the Respondent does not have rights or legitimate interest in the domain name, being the elements in paragraph 4(a)(ii) of the policy. Accordingly, as the onus is on the Complainant, the Complaint has not been proved.

Whether the Domain Name has been Registered and is being Used in Bad Faith

The domain name was first registered on May 19, 1999. The Complainant asserts that as at the date of the Complaint, it has only "begun to use PowerTV in Asia" and, indeed, only registered a trademark in Japan in 1999. The Complainant does not have any registration in Hong Kong. The Respondent asserts that the Complainant is not even now operating in Hong Kong and has no presence or visibility of any product in Hong Kong. This is consistent with the facts as presented by the Complainant. Further, the Respondent denies bad faith in the registration and points to its name and market to which its products are targeted, being a market different from that of the Complainant for the Complainantís products.

The Panel finds that the Complainant has not established that the domain name was registered in bad faith.

The Complainant would also need to establish that the domain name is being used in bad faith being a separate element of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003). The Panel accepts the Respondentís explanation as to the lack of marketed product associated with the domain name. The evidence provided by the Respondent confirms that, from 1999, it has made significant investment in products to be marketed under the name, PowerTV, aimed at a market different to the market for the Complainantís products in subject matter, end user and geographic location. While the matters set forth in paragraph 4(b) of the Policy are not exclusive of circumstances which are evidence of registration and use of a domain name in bad faith, the Panel finds that none of those circumstances have been established in the present case. To the contrary, the Panel finds that the Respondent has made out the circumstances in paragraph 4(c)(iii) of the Policy (demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods and services before any notice of the dispute).

The Panel finds that the Complainant has not established that the domain name is being used in bad faith.

 

7. Decision

The Panel decides that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights as required by paragraph 4(a)(i) of the Policy but does not find that either of paragraphs 4(a)(ii) or (iii) of the Policy apply.

Accordingly, the Panel does not require any action with respect to the domain name <powerTV.net>.

 


 

Dr. Annabelle Bennett SC
Sole Panelist

Dated: September 15, 2001