WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSC Holdings, Inc. v. Elbridge Gagne
Case No. D2003-0273
1. The Parties
The Complainant is CSC Holdings, Inc., Bethpage, NY 11714-3581 of United States of America, represented by Davis & Gilbert LLP of United States of America. The Complainant is the owner of Rainbow Media Holdings, which owns and operates the American Movie Classics network (Complaint, paragraph 11). CSC Holdings and its American Movies Classic subsidiary will be referred to collectively as the "Complainant" or "CSC Holdings".
The Respondent is Elbridge Gagne, Balboa, CA 92661 of United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwamctv.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2003. On April 10, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 22, 2003, eNom 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2003. The Response was filed with the Center on May 16, 2003.
The Center appointed Professor Justin Hughes as the sole panelist in this matter on June 6, 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
This dispute concerns the domain name <wwwamctv.com>, registered by the Respondent on March 28, 2002 (Complaint, Annex 1). The Complainant bases its complaint on its trademark in AMC, AMCTV, and American Movie Classics. The Complainant’s federal registration for the trademark AMC in relation to television services was granted by the United States Patent and Trademark Office on July 11, 1995 (Complaint, Annex 9).
The Complainant alleges that, until recently, the Respondent had used <wwwamctv.com> to redirect traffic to a website, "www.laconcert.com". (Complaint, para. 17). Respondent does not dispute this. (Response, passim). A Google cache of "www.laconcert.com" printed in April 2003, shows a small index of materials at that site, at that time (Complaint, Annex 11).
As described below, the Complainant and Respondent agree that recently the Respondent redirected "www.wwwamctv.com" to take Internet users to the Complainant’s site at "www.amctv.com".
5. Parties’ Contentions
The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.
The Respondent’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.
6. Discussion and Findings
To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The domain name at issue is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and
(ii) The Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because this dispute is between two parties that are United States citizens and who would otherwise be subject to jurisdiction before American courts to resolve any disagreement regarding the trademark(s) and domain name in question, the Panel concludes that pursuant to UDRP Rule 15(a), it is appropriate to apply rules and principles of American trademark law between the parties.
A. Identical or Confusingly Similar
As stated above, the Complainant is the owner of the federally registered trademark AMC (registration number 1904651) for cable television broadcasting services (Complaint, para. 15). The trademark was registered by the United States Patent and Trademark Office on July 11, 1995. The Complainant contends that the trademark has now achieved "incontestable" status (Id.) under 15 U.S.C. § 1065. Respondent has not disputed this claim.
But in comparing the trademark to the domain name in this case, there is a small complication: identical or confusingly similar to what? While the Complainant has a long-standing federal trademark registration for AMC, it does not claim to have – and does not appear to have – any federal trademark registration in AMCTV. Thus, the question: is <wwwamctv.com> to be judged for similarity to AMC or to AMCTV?
On August 23, 2002, American Movie Classics did file an intent-to-use trademark application for AMC TV FOR MOVIE PEOPLE (serial number 78157258), but according to records available at "www.uspto.gov", it does not appear that the U.S. Patent and Trademark Office has issued any registration based on this application. The application occurred several months after the Respondent registered <wwwamctv.com> and, therefore, does not provide a solid foundation for a UDRP claim against the Respondent.
Nonetheless, the Panel is persuaded that the Complainant has common law rights to AMCTV, such that consumers seeing "AMCTV" would believe it was a designation for audiovisual services provided by American Movie Classics. The Panel concludes that Complainant established these rights well before Respondents’ registration of <wwwamctv.com>.
First, the evidence suggests that the Complainant is principally associated by consumers with television services. In the same way that consumers would identify NBC TV as referring to the National Broadcasting Company and BBC RADIO as referring to the British Broadcasting Corporation, consumers identify American Movie Classics with television services and would readily understand "AMC TV" to mean American Movie Classics television. Although not mentioned in the Complaint, it is relevant that the Complainant also has U.S. trademark registrations, predating Respondent’s domain name, for trademarks which further associate the Complainant with the broadcast or cable distribution of audiovisual works. These include AMC NETWORKS (registration number 2324067) and AMC BEHIND THE SCREEN (registration number 2328085).
Second, the Complainant has been using <www.amctv.com> since 1996 to provide information about its television services (Complaint, para. 12). It appears that the Complainant enjoys substantial traffic at this website (Complaint, para. 14). While "American Movie Classics" may have originally been a descriptive term for the kind of services provided by the Complainant, AMCTV is more likely an arbitrary and fanciful mark. Unless the consumer is already familiar with the incontestable trademark AMC, this five letter combination would not clearly indicate anything to consumers, except perhaps that "TV" stands for television. See generally Thomas McCarthy, McCarthy on Trademarks, § 11.32 (describing when abbreviations have been sufficiently fanciful so as not to be recognized as merely shortened form of descriptive phrase); Kampgrounds of America, Inc. v. North Delaware A-OK Campground, 415 F.Supp 1288 (D. Del. 1976) aff’d without opinion 556 F.2d 566 (3rd Cir. 1977).
For these reasons, the Panel concludes that in considering confusing similarity, it is equally appropriate to compare <wwwamctv.com> to either AMC or AMCTV.
Many prior Panel decisions have considered domain names that consist of the prefix "www" affixed to a trademark and have concluded that such domain names are substantially similar to the relevant trademark:
CITGO Petroleum Corporation v. Horace A. "Woofer" Smith, WIPO Case No. D2003-0054 (March 4, 2003) (<wwwcitgo.com> confusingly similar to CITGO);
EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012 (February 28, 2003) (<wwweasyjet.com> confusingly similar to UK trademark EASYJET);
Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567 (August 14, 2002) (<wwwhotmail.com> and <wwwmsnbc.com> confusingly similar to Microsoft trademarks)
General Electric Company v. Fisher Zvieli, WIPO Case No. D2000-0377 (July 15, 2000) (<wwwge.com> confusingly similar to the trademark GE);
Reuters Limited v. Global 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000) (<wwwreuters.com> confusingly similar to REUTERS);
World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000) (<wwwwwf.com> and <wwwstonecold.com> confusingly similar to respective trademarks);
InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case D2000-0069 (April 3, 2000) (<wwwinfospaces.com> confusingly similar to registered INFOSPACE trademark).
Like our colleagues, this Panel concludes that <wwwamctv.com> is confusingly similar to AMCTV. It is confusingly similar for two reasons. First, "www" is the well-known acronym for "world wide web" and thus had no distinguishing capacity in a domain name context. See Reuters Limited v. Global 2000, Inc., supra. It is the equivalent of "800" in reference to a toll-free telephone number in the United States. See, e.g. Multi-Local Media Corp. v. 800 Yellow Book, Inc., 813 F. Supp 199 (E.D.N.Y. 1993) (determining that "800" in 800-Y-E-L-L-O-W-B-O-O-K was a generic term for toll-free calling and did not change confusing similarity to plaintiff’s YELLOW BOOK trademark). Second, use of "www" at the beginning of a domain name causes confusion whenever a very common and well-known typing error occurs: the typist omits the period (".") which would normally separate a domain name from the <www> field.
For much the same reasons, the Panel concludes <wwwamctv.com> would also be confusingly similar to the AMC trademark, where that trademark is principally identified by consumers with television services.
B. Rights or Legitimate Interests
The redirection of <wwwamctv.com> to the Complainant’s website at "www.amctv.com" (Complaint, para. 26) is not any bona fide offering of goods or services under the UDRP. The Respondent does not claim that it is. (Response, III.B) Nonetheless, the Respondent does appear to claim that he will eventually use <wwwamctv.com> to direct traffic to <laconcert.com> which, "at its completion, will be an information only website for the arts and culture community" (Response, III.C). The Respondent states that <laconcert.com> will be "in no way a commercial site" and "[t]herefore, <wwwamctv.com> has only been connected with non-commercial use." (Id.)
The Response misunderstands what constitutes "a legitimate noncommercial or fair use of the domain name" under UDRP Paragraph 4(c)(iii). If an animal rights activist established a non-commercial, informational website about animal rights at "generalmotor.com" (dropping the "s" from "motors"), that probably is not a legitimate noncommercial use of a domain name that is confusingly similar to the principal trademark of the world’s largest automotive company. In contrast, if I established a website about the dangers of video game addiction at "sonyplaystations.com" (adding an "s") and the website included discussion of the ubiquitous PlayStation technology, that is likely to be a "legitimate noncommercial or fair use." See, e .g. The State of Tasmania v. Craven, WIPO Case No. DAU2003-0001 (April 16, 2003) (applying parallel provisions of the .au Dispute Resolution Policy).
Based on what the Respondent has stated about the intended material at the "laconcert.com" website, the "laconcert.com" website will not be devoted to commentary, discussion, or criticism of American Movie Classics or cable television in general. Even if prospective use is a viable foundation for Paragraph 4(a)(ii) "rights and legitimate interest" (a question on which the Panel does not decide), this use of <wwwamctv.com> does not qualify.
C. Registered and Used in Bad Faith
The third element that must be established under the UDRP is that the Respondent "registered and used" the domain name in "bad faith." There is sufficient evidence of bad faith for the Complainant to have met its burden in this dispute. In particular, the Panel finds three distinct grounds on which bad faith may be inferred.
(i) Use of the "www" prefix – intent to confuse
The Respondent has not provided any reason for having the <wwwamctv.com> domain name and, in the absence of such a reason, the Panel concludes that registration of the domain name was an intentional effort to gain Internet traffic from the typing errors of users seeking the Complainant’s website. In the words of the Panel in the Infospace dispute, "The addition of ‘www’ . . . to Complainant’s mark is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s website." Infospace, supra. Absent any reasonable explanation from the Respondent – and the Response has no explanation, reasonable or otherwise (Response, passim) -- this appears to be a classic and unqualified case of "typosquatting" in which the Respondent sought confusion and error on the part of Internet users. See Citgo, supra ("The Panel finds that typosquatting does exist in this case, creating a confusing similarity between Complainant’s trademarked name and the disputed domain name.")
The Panel is not unmindful of the problem that this arguably conflates evidence of the UDRP’s 4(a) requirement and the UDRP’s 4(c) requirement: the finding that the domain name is very confusingly similar to the trademark provides the foundation for the inference that the domain name is intentionally confusingly similar to the trademark.
But as said earlier in this opinion, it is reasonable that principles, rules, and doctrines of American intellectual property should to be applied to a dispute between American parties. American courts have often imputed predatory intent or bad faith to the defendant in circumstances where (a) the defendant’s trademark was very similar to the plaintiff’s, and (b) the defendant knew or almost certainly knew of the plaintiff’s trademark. See E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp 457, 467 (N.D. Cal. 1991) ("where an infringer adopts a particular name with knowledge of plaintiff’s mark, courts presume that there was an intent to copy the mark"); AMF, Inc. Sleekcraft Boats, 599 F.2d 341, 354 (9th Cir, 1979). Copyright law provides an even stronger parallel. Whereas intent is only one (non-essential) factor under trademark law, American courts determining copyright infringement require proof of copying. Yet many such courts will accept "striking similarity" itself as evidence of the copying. See Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) cert. denied 330 U.S. 851 (1947); Repp v. Webber, 132 F.3d 882 (2d Cir. 1997); Ty, Inc. v. GMA Accessories, 132 F.3d 1167 (7th Cir. 1997). Here, the Respondent’s domain name is very similar to the Complainant’s trademark interests in a situation where the Respondent almost certainly knew of American Movie Classics and has absolutely no other explanation for his choice of domain name. In such circumstances, an inference of bad faith is appropriate.
(ii) Respondents registration of other confusingly similar domain names
Moreover, in this case there is additional evidence of the Respondent’s bad faith. The Respondent also has registered the domain name <wwwbravotv.com> without any apparent rights or interests in either WWWBRAVOTV or BRAVOTV. (Complaint, Annexes 12 and 13, Panel’s own investigation of WHOIS databases). Registration of multiple domain names that are confusingly similar to established trademarks is evidence of bad faith. See also 15 U.S.C. §1125 (d)(B)(i)(VIII) (registration "of multiple domain names which the person knows are identical or confusingly similar to marks of others" is indicia of bad faith).
(iii) Respondent’s behavior in redirection of the domain name
Finally, there is the Respondent’s unusual decision to redirect <wwwamctv.com> to the Complainant’s website (Complaint, para. 26, Response, III.B) [It appears that the Respondent has also redirected <wwwbravotv.com> to another of the Complainant’s websites].
Respondent provides no real explanation for this. The Response says only "[t]he <wwwamctv.com> computer servers were instructed to redirect users to Complainant’s own Internet site "AMCTV.com" during the period of the dispute, it was not an attempt to show use." (Response, III.B)
The Panel accepts that the redirection "was not an attempt to show use," but the redirection is arguably an acknowledgement of sorts that <wwwamctv.com> is confusingly similar to <amctv.com>. More importantly, the redirection could easily increase confusion among users. Internet users who mistakenly find the real <amctv.com> by typing in <wwwamctv.com> might bookmark <wwwamctv.com> or advise friends that <wwwamctv.com> is where one finds American Movie Classics, only to be confused when the Respondent later redirects the domain name to another website.
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, <wwwamctv.com> be transferred to the Complainant.
Date: June 18, 2003