BPI Communications, Inc. and VNU Business
Media, Inc. v. Boogie TV LLC
Claim Number: FA0203000105755
PARTIES
The
Complainant is BPI Communications, Inc.,
and VNU Business Media, Inc., New York, NY (“Complainant”) represented by Gene S. Winter, of St. Onge, Steward, Johnston & Reens, LLC. The Respondent is Boogie TV LLC, Livingston, NJ (“Respondent”) represented by Ari Goldberger of ESQwire.com Law Firm .
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <billboard.tv>,
registered with The .tv Corporation.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, JR., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 5, 2002; the Forum received a hard copy of the
Complaint on March 8, 2002.
On
March 8, 2002, The .tv Corporation confirmed by e-mail to the Forum that the
domain name <billboard.tv> is
registered with The .tv Corporation and that the Respondent is the current
registrant of the name. The .tv
Corporation has verified that Respondent is bound by the The .tv Corporation
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
March 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 1,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@billboard.tv by e-mail.
No
Response was filed. Respondent filed
Respondent’s Additional Response titled Additional Statement of Respondent
Pursuant to Rule 7 of National Arbitration Forum Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy within the time permitted for additional
submissions. This document will be
considered the substantive Response in this proceeding.
On April 16, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainants
are BPI Communications, Inc. and its successor in interest, VNU Business Media,
Inc.
Complainants
are in the business of sound recording popularity charts and video charts
issued periodically, providing a directory of sources for the music recording
industry, providing entertainment services in the nature of providing live
music by a group or individual, and providing information and broadcasting
services in the field of music and music-related entertainment over the
Internet. Complainants are also in the
business of promoting distinguished achievement in the advertising of the music
and entertainment industries through the conducting of an awards program
featuring an awards ceremony and festivities, audio cassettes, audio compact discs
and phonograph records featuring music, magazines about the music and
entertainment industry, posters, pamphlets recommending video recordings, and
on-line computer based information services in the music and entertainment
field.
The
BILLBOARD Family of Marks has been in use for more than 100 years and the claim
of various common-law rights extends back at least 100 years as well. As a result of exclusive, continuous and
extensive use by Complainants, the BILLBOARD Family of Marks acquired
significant goodwill, became famous and over the years came to represent
quality and excellence in the full range of Complainant’s goods and services
throughout the world.
The
BILLBOARD Family of Marks are numerous and registered both in the United States
and other countries. The Marks include
BILLBOARD, registered in June 25, 1974 with the United States Patent and
Trademark Office for sound recording popularity charts issued periodically;
BILLBOARD, registered August 15, 1991, for audio cassettes, audio compact discs
and phonograph records featuring music; BILLBOARD, registered July 22, 1997 for
clothing; BILLBOARD.COM registered November 10, 1998 for providing information
in the field of music; and the word BILLBOARD in combination with other words
such as “Live”, “Radio”, “Top Ten”, “Online”, “Bulletin”, “Radio” and others.
Complainant
owns a number of domain names including <billboard.com>,
<billboard.org>, <billboard.info> and others containing the word
BILLBOARD in connection with other words.
The
BILLBOARD Family of Marks is used all over the world through
<billboard.com> and is used to designate the well-known magazine
“Billboard,” the international newsweekly of music, video, and home
entertainment that is circulated worldwide.
On
or about June 2000, Respondent began using the <billboard.tv>
domain name on the Internet in New York, throughout the United States and the
world, to direct unsuspecting Internet users to Respondent’s site where various
products and services are promoted, including in the field of music, art,
dance, entertainment, fashion, film, health, interactive games, news and sports
and offering goods and services covered by Complainants’ goods and services.
Respondent’s
activities have led the public to erroneously conclude that the goods and services
offered by Respondent originate with, and/or sponsored by, and/or authorized by
Complainants.
On
August 15, 2001 Complainants filed a lawsuit in the Federal District Court for
the Southern District of New York against Respondent for Trademark and Service
Mark Infringement, Unfair Competition, Dilution, Deceptive Trade Practices,
Cybersquatting and Counterfeiting.
Shortly after receiving notice of the lawsuit, Respondent modified its
<billboard.tv> web site to appear as if the links are solely
associated with the real estate industry, however the entertainment segments of
the website still appear.
On
August 31, 2001, Respondent filed a U.S. trademark application for BILLBOARD
for computer search engine software.
This mark has subsequently been rejected, with the USPTO citing the
BILLBOARD Family of Marks as a determining factor.
The
domain name is identical or confusingly similar to Complainants’ registered
BILLBOARD Family of Marks.
Prior to notice of the dispute, Respondent did not use the
domain name in connection with a bona fide offering of goods or services. Respondent has not been and is not commonly
known by the domain name in any capacity, nor does Respondent have any
relationship with or permission from Complainants for the use of any of the BILLBOARD
Family of Marks. Respondent is not
making a legitimate noncommercial or fair use of the domain name. Respondent has acted for commercial gain to
misleadingly divert consumers to its web site as well as its <boogie.tv>
website which then links to more sites in the music and entertainment industry.
By
linking the domain name to Respondent’s <boogie.tv> web site, Respondent
is intentionally attempting to attract, for commercial gain, Internet users to
its web site by creating a likelihood of confusion with the Complainants’ mark
as to the source, sponsorship, affiliation, or endorsement of its web
site. Respondent is attempting to
benefit from the goodwill associated with Complainants to Complainants’ detriment.
The
mark, BILLBOARD, is a famous and strong mark.
Respondent cannot credibly claim to have been unaware of Complainants’
prior rights when they registered the domain name.
B. Respondent
Respondent
is Boogie TV LLC. Respondent operates
an Internet web site directory and search engine under the name iBoogie, which
provides advertisements and links to web sites across a wide range of general
categories including arts, home, regional, business, kids and teens, science,
computers, news, shopping, games, recreation, society, health reference, sports,
and world. IBoogie utilizes
Respondent’s proprietary iBot search engine technology for which Respondent has
applied for a United States Patent. The
iBoogie directory and search engine is used for Respondent’s <billboard.tv>.
web site. Among the real estate links
offered at <billboard.tv> are links for real estate appraisers,
associations, consultants, sales, rentals, training and employment.
In
addition to <billboard.tv>, Respondent owns several other domain
names containing only generic words, which it utilizes for web sites powered by
the iBoogie directory. Like the <billboard.tv>
web site, each of Respondent’s web sites contain the links for all the other
general categories provided by the Boogie directory, but the first links to
appear on each web site are those related to the topic associated with the
generic domain name.
There
is no evidence of bad faith registration or use on the part of Respondent. Respondent did not register <billboard.tv>
with the intent to sell it to Complainants, to disrupt their business, to
prevent them from registering their trademark, or to confuse consumers. While Complainant has alleged that
Respondent modified the <billboard.tv> web site only in response
to its federal lawsuit, in fact Respondent’s <billboard.hm> web site was
activated with real estate content on May 25, 2001, prior to the lawsuit. Through inadvertence, the <billboard.tv>
web site was not activated at this time, even though the content had already
been developed for <billboard.hm>, an error not realized until after the
filing of the federal court action.
Respondent
is using the disputed domain name for its web site, BILLBOARD.TV a directory
with links and advertisements associated with the sale and rental of real
estate. Respondent has a legitimate
interest vesting at the point of registration for the intent of using it as a
real estate web site.
It
is well established that the use, and intent to use, a common word domain name
for a related web site constitutes use in connection with a bona fide offering
of goods or services. The look and feel
and operation of Respondent’s <billboard.tv> web site is entirely
consistent with the other common-word-domain web sites Respondent
operates. Respondent has expended
substantial sums to develop its web sites.
Respondent
has a legitimate interest in the disputed domain name simply because it is a
common generic word, which vested Respondent with irrevocable rights and a
legitimate interest on the date of registration.
There
is no evidence presented to show bad faith on part of Respondent. Complainant’s argument that Respondent’s web
sites offer goods and services similar to Complainant does not support a
finding of bad faith. That the web site
happens to contain links to entertainment is not evidence that Respondent has
intended to cause any confusion.
Respondent’s web site directory is not dedicated to music. It has links to all sorts of categories of
goods and services. There is nothing on
the <billboard.tv> that would cause users to believe the web site
is associated with Complainant.
C. Additional Submissions
None
FINDINGS
1. Complainants are corporations, one of
which is the successor in interest of the other.
2. Complainants are engaged in the music and
entertainment business and have engaged is this business for a long period of
time.
3. Complainants hold Registration Number
986,949 for the Trademark BILLBOARD with the United States Patent and Trademark
Office with registration date of June 25, 1974 and showing first use in
commerce of June 23, 1934. Complainants
hold similar registrations for trademarks and service marks for BILLBOARD both
alone and in connection with other words all of which predate the registration
of the disputed domain name here at issue.
4. Complainants hold Registration Number
2,202,505 for the Service Mark, BILLBOARD.COM with date of registration of
November 10, 1998 showing first use as November 7, 1996.
5. Complainants contend that they own domain
name registrations for <billboard.com>, <billboard.org>,
<billboard.info>, and other domain names containing the word
BILLBOARD. Respondent does not contest
these contentions so the contentions are taken as true.
6. Complainants have achieved identification
and fame of the BILLBOARD mark through continuous use of it for nearly 60 years
and particularly through the publication and distribution of the well-known
magazine BILLBOARD, the international newsweekly that is circulated worldwide
and commenced circulation as early as the year 1908.
7. Respondent is an organization that
operates an Internet web site directory and search engine under the name
iBoogie, which provides advertisements and links to web sites across a wide
range of general categories of products and services.
8. Respondent’s method of operation is to
register domain names of a generic character which are then utilized as web
sites with content relating to the generic domain name but also containing
links for all other general categories provided by the iBoogie directory, but
the first links to appear on each web site contain the links related to the
topic associated with the generic domain name.
9. Respondent registered the domain name <billboard.tv>
on June 1, 2000.
10. In June of 2000, Respondent began to
operate a web page at <billboard.tv> that announced “Billboard.tv
is an advanced MetaSearch Engine for all your needs. It submits user query simultaneously to a multiple of Web-enabled
search engines. The search results from different search engines are combined
into one list. The system performs
intelligent clustering of results and organized them into dynamically generated
clusters by topic. The clustering is
generated automatically in real time, and presented in an expandable
hierarchical menu.” The letters “tm”
were illustrated after the word BILLBOARD as if to suggest that Respondent held
a trademark in the word.
11. On August 15, 2001, Complainants filed a lawsuit against
Respondent in Federal District Court contending trademark and service mark
infringement. Complainant elects to
proceed under the ICAAN procedures even though there is a suit pending. The Panel decides to proceed to a decision
under Rule 18 of Rules for Uniform Domain Dispute Resolution Policy.
12. The domain name, <billboard.tv>
and Complainants’ trademark, BILLBOARD, are identical.
13. The trademark BILLBOARD is not generic so
as to deserve no protection under law.
14. Respondent has no rights and legitimate
interests in the disputed domain name.
15. Respondent registered and used the
disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainants have rights in the trademark
BILLBOARD, for the purposes of this section by reason of their registrations of
the mark with the United States Patent and Trademark Office. Respondent does not dispute that the
disputed domain name and trademark are identical. This concession settles this point. When no opposition is made to
a contention, it must be found to be established. See Hoyts Cinemas Corp. v.
Rage Warehouse, FA 105209 (Nat. Arb. Forum Apr. 5, 2002).
Rights or Legitimate Interests
Complainant shows that they have not
authorized or licensed Respondent to use the BILLBOARD mark. No contention is made by either Complainants
or Respondent that Respondent is the owner of any trade or service mark that is
identical to the domain name. Indeed,
Respondent’s attempted registrations of BILLBOARD and BILLBOARD.TV with the
United States Patent and Trademark Office were rejected by the Trademark
Examining Attorney based upon a likelihood of confusion with Complainants’
trademark or service marks. Neither
party contends that Respondent was known as BILLBOARD.TV prior to registration
of the domain name. Complainants
contend that they have exclusive rights to use the mark BILLBOARD. As a result of Complainants’ showing, and
Respondent’s apparent lack of rights and legitimate interests in the domain
name, the burden must shift to Respondent to demonstrate rights and legitimate
interests in the domain name. see Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and
legitimate interests by any of the methods set out in Paragraph 4(c) of the
Policy or any sufficient justification not written in the Policy but adequate
to prove rights and legitimate interests.
Respondent’s
major contention is that the word, BILLBOARD, is generic. It is a mere common word to which
Complainant does not have exclusive rights, Respondent argues. Respondent argues that it has a legitimate
interest in the domain name simply because it is a “common generic word”, which
vested Respondent with irrevocable rights and a legitimate interest in the
domain name at the point of registration.
Respondent’s position is that it may
defend a domain name dispute against the owner of a properly registered
trademark or service mark that is identical to the domain name, which trademark
or service mark has been registered for more than five years, on the ground
that the trademark or service mark is “generic”.
A Panel must decide a complaint on the
basis of statements and documents submitted and in accordance with the Policy,
the Rules and any rules and principles of law that it deems applicable. see
Rule 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy.
The principles of law set out in Park
‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) are found to
be instructive. In that case the
plaintiff contended infringement of its trademark against defendant based upon
a registered trademark that had become incontestable. Defendant contended that
the mark was merely descriptive and thus unenforceable. The Supreme Court first noted the public
policy set out in the Lanham Act that requires that trademarks should receive
nationally the greatest protection that can be given them. It next defined marks that constitute a
common descriptive name to be generic.
A generic term is one that refers to the genus of which the particular
product is a species. Generic terms are
not registrable, and a registered mark may be canceled at any time on the
grounds that it has become generic. A
merely descriptive mark, in contrast, describes the qualities or
characteristics of a good or service, and this type of mark may be registered
only if the registrant shows that it has acquired secondary meaning, i.e., it
has become distinctive of the applicant’s goods in commerce.
The Supreme Court stated that without
regard to a mark’s incontestable status, a mark that has been registered for
five years is protected from cancellation on the grounds that it is merely
descriptive only if the petition to cancel is filed within five years of the
date of registration.
The conclusion was reached that the
holder of a registered mark may rely on incontestability to enjoin infringement
and that such an action may not be defended on the grounds that the mark is
merely descriptive.
The dissenting opinion noted that where a
mark had acquired a well-established secondary meaning, effect should be given
to the incontestable language of the Act, but that a wholly different question
is presented when the record establishes that a mark should not have been
registered at all. If it can be proved
that the registrant failed to establish secondary meaning at the time of
registration or that the registrant is unable to establish secondary meaning in
the case, then the incontestability provisions of the Lanham Act should not
foreclose the issue.
In this domain name dispute there is no
evidence or contention that Complainants failed to establish all necessary
requirements of registration. It is
clear from the Complaint and exhibits that the mark BILLBOARD has established
secondary meaning.
Under the reasoning of either the
majority or the dissenting opinions, a plaintiff in possession of an
incontestable trademark registration should prevail in an infringement case as
against a defense that the trademark is generic or descriptive.
The Supreme Court states that “With
respect to incontestable marks, however,” (the Lanham Act) “provides that
registration is conclusive evidence of the registrant’s exclusive right to use
the mark…Mere descriptiveness is not recognized by” (the Lanham Act) “as a
basis for challenging an incontestable mark “
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,196
(1985).
The interpretation of prevailing law made
in the case by the Supreme Court suggests that a respondent should not be
permitted to establish legitimate rights and interests in a domain name that is
identical to complainant’s registered, incontestable trade or service mark on
the ground that the trademark or service mark is “common generic word”, as
Respondent contends in this proceeding.
To permit this defense to establish legitimate rights and interests
would seem to conflict with the scheme under which trademarks and service marks
are established and protected. The
Panel is aware of the contrary approach to this issue set out in Rollarblade,
Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000).
A respondent should bear a substantial
burden in attempting to show why it is justified in appropriating the
registered, uncontestable trademark of another in a domain name. The contention that the trademark is merely
a common word does not carry the issue.
Respondent must show more. In
this case, Respondent attempts to prove that BILLBOARD is in general use
by attaching a list of trademarks that begin with the word BILLBOARD. Complainants own many of these marks.
Respondent next does an Internet search for the word, BILLBOARD for the
purpose of showing that the word is generally used. Again, many of the results relate to Complainants and their
activities. Neither of these methods
clearly illustrate that the word, BILLBOARD, is in widespread use as a
descriptive expression as was the case in General Machine Prod. Co. Inc. v.
Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000). Respondent’s showing is insufficient.
Respondent relies on the holdings in Cream
Holdings Limited v. National Internet Source, Inc. D2001-0964 (WIPO
Sept. 28, 2001); Energy Source Inc. v. Your Energy Source, FA96364 (Nat. Arb. Forum Feb. 19, 2001); and
Ultrafem, Inc. v. Warren R. Royal, FA97682 (Nat. Arb. Forum Aug.
2, 2001) as authority that the registration of domain names containing common
generic words vests rights and interests in the registrant without regard to
any trademark or service mark registrations of another party. Cream Holdings Limited v. National
Internet Source, Inc. and Energy Source Inc. v. Your Energy
Source, were cases where complainants were asserting common law
rights. In neither case did complainant
have a registered trademark. Only in Ultrafem,
Inc. v. Warren R. Royal, was there a registered trademark. The Panel did not protect the trademark
“instead” because it was subject to substantial third party use and
incorporated in 29 active trademark applications and appeared on 10 million web
pages. None of these decisions nor any
of the other decisions cited by Respondent on this issue persuade the Panel
that Respondent ought to be found to have legitimate rights and interests in
the domain name <billboard.tv>.
Complainant has advanced sufficient
evidence to prove that BILLBOARD has achieved secondary meaning among
consumers in the United States as denoting Complainants’ music and
entertainment related business pursuits. Thus, BILLBOARD, is not a
common generic word worthy of no protection.
see Del Laboratories, Inc. v. Nett Corp., FA104555 (Nat. Arb.
Forum Mar. 26, 2002) considering whether “la cross” and “corn silk” were
generic and the issue of secondary meaning.
Respondent fails to show that it has
established legitimate rights and interests based upon the ground that BILLBOARD
is a generic term.
Respondent fails to show that before
notice of the dispute, it used or made demonstrable preparations to use, the
domain name in connection with a bona fide offering of services. A use of
Complainants’ registered mark does not establish a bona fide offering of
services. see Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000),
holding “To conclude otherwise would mean that a Respondent could rely on
intentional infringement to demonstrate a legitimate interest, an
interpretation that is obviously contrary to the intent of the Policy.”
Respondent does not contend that it has
been commonly known as <billboard.tv>.
Respondent does not contend a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain.
None of the methods of demonstrating
rights and legitimate interests set out in the Policy have been shown. See
Uniform Domain Name Dispute Resolution Policy, Paragraph4(c).
Respondent has no rights or legitimate
interest in the domain name BILLBOARD.TV.
Registration and Use in Bad Faith
The
burden is upon Complainants to show bad faith registration and use on the part
of Respondent. Bad faith can be
illustrated in any of the methods given in Paragraph 4(b) of the Policy or by
any other method that should be recognized under the Policy as evidence of
registration and use of a domain name in bad faith.
Complainant has chosen to base its case
on Paragraph 4(b)(iv). Complainants
contend that by linking the disputed domain name to Respondent’s
<boogie.tv> web site, Respondent is intentionally attempting to attract,
for commercial gain, Internet users to its web site by creating a likelihood of
confusion with the Complainants’ mark as to the source, sponsorship,
affiliation, or endorsement of its web site.
By offering goods and services at <billboard.tv>, which are
identical to Complainants’ goods, and services, Respondent is attempting to
benefit from the goodwill associated with Complainants to Complainants’
detriment, it is argued.
The evidence supports the proposition
that when first put on line, the web site at <billboard.tv> was
linked to a number of other sites that offered goods and services in many
categories. Respondent admits that the <billboard.tv>
web site provided a search engine and links to sixteen general categories
including arts, business, computers, games, health, home, news and sports. Review of the Boogie.tv web page shows that
it offers “Boogie.TV-MetaSearch Infotainment engine for VISIBLE & INVISIBLE
WEB. Find EVERYTHING! Search & Research, Inquire & Investigate. Movies,
music, sports, games, cheats, downloads, gossips, celebrities &
homework.” Complainants are in the
music and entertainment business. The
links associated with <billboard.tv> and <boogie.tv> appear
to be in competition for the same Internet users, which Complainants are trying
to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv>
and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the
web site or of a product or service on the web site.
Respondent, though not conceding
confusion, contends that since it converted <billboard.tv> to a
web site focused on real estate and related services, no such problem can be
seen to exist. That was not the view of
the Trademark Examining Attorney considering Respondent’s application for a
trademark for BILLBOARD.TV. The
Trademark Examining Attorney, in considering the merits of the Registrant of
BILLBOARD, as against the application for BILLBOARD.TV, stated as follows: “…the services are related. The goods and/or services of parties need
not be identical or directly competitive to find a likelihood of confusion.
They need only be related in some manner, or the conditions surrounding their
marketing be such, that they could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief that the goods or
services come from a common source…The applicant offers computer services in
the nature of proving accesses to a global computer network for the purposes of
searching information in the field of real estate, and electronic mail and
online chat services in the field of real estate and housing. The registrant offers computer information
services in the field of music accessible by means of the internet. Although
the services are not identical, consumers are likely to believe that the
applicant has merely expanded its services to provide information in the field
of real estate. Consumers, therefore, are likely to believe the services
originate from the same source…Registration of the proposed mark must therefore
be refused.”
The Panel finds this assessment to be
correct.
Respondent registered and used the word
BILLBOARD to capitalize on the fame and goodwill associated with the word. Respondent intended to divert users to its
own web site for commercial gain. Respondent’s
explanation that it chose the word BILLBOARD as a “generic” word does not have
a convincing ring when compared to the fame and established reputation of the
Complainants’ registered mark that has been in commerce since 1937. Respondent
does not state in the Affidavit attached as an exhibit to the Response that
Respondent did not know of Complainants’ trademark at the time of registration
of the domain name. The Affiant simply
averred that domain name was “appropriate.” Even if Respondent truly believed
that BILLBOARD was generic, when it was not, that does not excuse Respondent’s
actions in registering and using <billboard.tv>. see Sony
Corporation v. Times Vision Ltd, FA95686 (Nat. Arb. Forum Mar. 9, 2001).
Respondent was on notice of Complainants’
registered trademark at the time of registration and use of <billboard.tv>.
That alone is some evidence of bad faith. see Exxon Mobil Corp. v. Fisher, D2000-1312
(WIPO Dec. 18, 2000); Samsonite Corp. v. Colony Holding, FA 94313 (Nat.
Arb. Forum Apr. 17, 2000).
It is the finding of this Panel that
under all of the facts and circumstances of this case along with all reasonable
inferences to be drawn from them, that Respondent intentionally attempted to
attract for commercial gain, Internet users to its web site by creating a
likelihood of confusion with the Complainants’ mark as to the source,
sponsorship, affiliation, or endorsement of the web site or of a product or
service on the web site. see State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000); ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000).
DECISION
It is the decision of this
Panel that the domain name <billboard.tv>, now registered to the
Respondent, Boogie TV LLC, be transferred to the Complainants, BPI
Communications, Inc. and VNU Business Media, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 30, 2002
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