WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Riedel Electronics, LLC d/b/a Telstar Electronics v. Ross Marshall
Case No. D2003-0231
1. The Parties
The Complainant is Riedel Electronics, LLC d/b/a Telstar Electronics of Dousman, WI, United States of America, represented by Reinhart Boerner Van Deuren s.c. of United States of America.
The Respondent is Ross Marshall of Frazier Park, CA, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name, <predictatv.com>, is registered with Network Solutions, Inc., Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2003. On March 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On March 25, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 28, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 23, 2003.
The Center appointed Thomas D. Halket as the sole panelist in this matter on April 29, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant manufactures and sells televisions under the PREDICTA and PREDICTA TV trademarks. A number of Complainantís products resemble televisions manufactured by The Philco Corporation ("Philco") between 1958 and 1962, but include modern features and components. Complainant also produces several television models that are of its own design. Complainant owns the U.S. federal trademark registration for PREDICTA, (registration date March 28, 2000), and common law trademark rights for PREDICTA TV. Complainant advertises and sells its products online at "www.predicta.com" under its PREDICTA and PREDICTA TV marks. The Philco Corporation previously owned the PREDICTA trademark, but abandoned its rights to this trademark in the early 1960s. Complainant began using the PREDICTA and PREDICTA TV trademarks in commerce at least as early as January 6, 1998 and January 25, 1999, respectively.
On or around March 1, 2002, Complainant discovered that Respondent was selling an original Philco Holiday television set on eBay using Complainantís copyrighted website background artwork and images. Shortly after March 1, 2002, Complainant sent an email correspondence to Respondent requesting that Respondent cease and desist from using Complainantís images. Complainant received several responses from Respondent and his apparent business partner or acquaintance. The first response indicated Respondent would comply with Complainantís request. In a subsequent email, on or about February 6, 2003, Respondent contacted Complainant and offered to include a banner and hyperlink on Respondentís new website residing at "www.predictatv.com", in exchange for Complainant granting Respondent consent to use Complainantís images on Respondentís "www.predictatv.com" website. The hyperlink would lead to Complainantís "www.predicta.com" website. On February 11, 2003, after Complainantís review of Respondentís website, Complainant replied to Respondent rejecting Respondentís proposal to link to Complainantís website and requested that Respondent immediately cease and desist from using "www.predictatv.com" as its domain name due to the fact that it was confusingly similar to Complainantís federal trademark and domain name.
Instead, Respondent established a link on its "www.predictatv.com" website to CB Electronicsí website, a competitor of Complainant. Respondent, referred to the link as providing "new tandem PREDICTA TVís". Further, on February 12, 2003, Respondent responded to Complainantís February 11, 2003, cease and desist letter and argued that because the Domain Name incorporated the additional letters "tv", it was different than Complainantís PREDICTA mark and would thus not cause a likelihood of confusion among consumers. Respondent also offered to sell the Domain Name to Complainant for $500.00.
On February 12, 2003, Complainant received three unsolicited email correspondences from Respondent raising various defenses to Complainantís claim. Subsequently, there ensued several exchanges of emails, all to no avail.
5. Partiesí Contentions
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules, as approved by ICANN 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 the 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.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
Complainant owns the U.S. Trademark Registration for the PREDICTA trademark for use in connection with televisions and components, namely, remote control devices for televisions; and computer and data processing hardware and components, namely, computer monitors. Complainant has used this mark in interstate commerce and in connection with the goods identified therein since as early as January 6, 1998. Complainant further owns the common law trademark rights to the mark PREDICTA TV, which it has used within interstate commerce since at least January 25, 1999. Since at least June of 1998, Complainant has operated an online retail store at "www.predicta.com", where its customers may purchase and obtain information about Complainantís televisions and hardware components.
On or around January 30, 2003, Respondent started an online television repair company under the name "Predicta Repair Co." located at the Domain Name. Respondent registered the Domain Name on January 30, 2003.
Except for the addition of the generic letters "tv", the Domain Name <predictatv.com> is identical to Complainantís Predicta trademark. Merely adding a descriptive term to a registered trademark does eliminate the likelihood of confusing similarity between the Respondentís Domain Name and Complainantís trademark. See e.g. Christieís Inc. v. Tiffanyís Jewelry Auction Inc., WIPO Case No. D2001-0075 (Mach 6, 2001) and Caterpillar Inc. v. Quin, WIPO Case No. D2000-0314 (June 12, 2000).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no allegation that prior to the date in which Respondent registered the Domain Name, Respondent was known to operate a business under the name "Predicta", "Predicta TV" or any similar name. There is also no allegation that Respondent has ever been publicly known as a reseller or retailer for the sale of PREDICTA televisions produced by Complainant.
Respondent apparently repairs vintage televisions, including those produced by Philco under its PREDICTA mark. But, even though a respondent may be selling goods bearing a complainantís trademark, the respondent does not have the right to use and register that trademark as a domain name without the trademark ownerís consent. See Ullfrotté AB v. Bollnas Imps., WIPO Case No. D2000-1176 (October 23, 2000) and Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a) 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 used of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented our-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web sit or location."
In March of 2002, Respondent copied certain portions of Complainantís website, namely, the background art and scripted PREDICTA font, and incorporated such material on an eBay auction for the sale of a Philco television. Complainant demanded Respondent cease and desist from all use of Complainantís intellectual property. It was at this time that Complainant made Respondent aware of Complainantís federally registered trademark for PREDICTA. Accordingly, the evidence clearly supports a conclusion that Respondent was aware of Complainantís "www.predicta.com" website and Complainantís trademark rights to the name PREDICTA and PREDICTA TV, prior to Respondentís registration of the Domain Name. This evidence also supports the conclusion that Respondent intentionally, and with knowledge of Complainantís trademark rights, registered the Domain Name for the specific purpose of trading off the name and reputation of the Complainant.
The Panel, therefore finds that by registering the Domain Name and continuing to use it, Respondent acted to intentionally attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainantís mark.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <predictatv.com> be transferred to the Complainant.
Thomas D. Halket
Dated: May 9, 2003