National Arbitration Forum

 

DECISION

 

Speed Channel, Inc. v. This Domain Is Not For Sale and Louis Filipescu c/o The Inbox Company

Claim Number: FA0509000566696

 

PARTIES

Complainant is Speed Channel, Inc. (“Complainant”) represented by Ian C. Ballon and Jonathan M. Eisenberg, of Manatt, Phelps & Phillips, LLP, 11355 W. Olympic Blvd., Los Angeles, CA 90064.  Respondent is This Domain Is Not For Sale and Louis Filipescu c/o The Inbox Company (“Respondent”), represented by Robert J. Lauson, of Lauson & Associates, 1334 Parkview Avenue, Suite 100, Manhattan Beach, CA 90266.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <speed.tv > (the “Domain Name”), registered with TV Corp.

 

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum on September 21, 2005. The National Arbitration Forum received a hard copy of the Complaint on September 26, 2005.  The National Arbitration Forum notified the Complainant of administrative deficiencies in the Complaint on September 27, 2005, and received a copy of the Amended Complaint on September 28, 2005.

 

On September 22, 2005, TV Corporation confirmed by e-mail to the National Arbitration Forum that the <speed.tv> domain name is registered with TV Corporation and that Respondent is the current registrant of the name.  Respondent is bound by 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 September 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 2005 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 and administrative contacts, and to postmaster@speed.tv by email.

 

On October 17, 2005 an Order Granting Extension of Time to Respond to Complaint was granted, extending the response time to November 2, 2005.  A timely Response was received on November 2, 2005.

 

Complainant’s Additional Submission was timely received on November 7, 2005.

 

On November 11, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

• Complainant operates the “Speed Channel” cable television channel, which is available in approximately 68 million homes throughout the United States, and operates the related internet site at <speedtv.com>;

 

• Complainant holds numerous valid United States trademark registrations for the well-known family of SPEED trademarks, including SPEED CHANNEL, SPEED LIVES HERE, SPEED ON DEMAND, SPEEDVISION GT CHAMPIONSHIP, SPEEDVISION NEWS RACEWEEK, SPEEDVISION TOURING CAR CHAMPIONSHIP, SPEEDVISION, SPEEDVISION WORLD CHALLENGE, SPEEDVISION.COM, and SPEEDWIRE; Complainant also has a pending United States trademark application for SPEED (collectively the “SPEED Marks”).  Complainant has appended to its complaint evidence of its registrations;

 

• Respondent registered the disputed Domain Name on July 15, 2003 and used it to link users to a different retail website at <inbox.tv>, offering antique replicas and other curios with no connection to the concept of “speed;”

 

• Respondent filed an intent-to-use registration for SPEED.TV with the United States Patent and Trademark Office (“USPTO”) on September 23, 2003.  Respondent abandoned this application in response to Complainant’s institution of opposition proceedings before the USPTO’s Trademark Trial and Appeal Board;

 

• In response to a cease and desist letter sent to Respondent’s counsel on March 16, 2005, Respondent stated he would use the domain name to create a noncommercial weblog that discusses the rapid growth of technological advancements.  Respondent did later replace the redirect mechanism at <speed.tv> with a weblog focused on high-speed police car chases.  This weblog has minimal content; and

 

• Respondent engaged in similar activity with another domain name, <spike.tv>, virtually identical to the name of a cable television service provider operating under the SPIKE TV mark.  Respondent registered this Domain Name, and redirected traffic to its <inbox.tv> site.  Respondent later replaced this redirect mechanism with a minimal weblog dedicated to volleyball.

 

B. Respondent

 

Respondent contends that:

 

• The word “speed” is common or generic, and Complainant’s trademark rights are not in the word “speed” alone, but rather in combinations like SPEED CHANNEL;

 

• Other parties have federally registered trademarks for the word “speed;”

 

• Complainant’s pending trademark application for SPEED alone is an ex post facto attempt to secure rights in a generic word; 

 

• The items sold on Respondent’s <inbox.tv> website were not in competition with any of Complainant’s products or services;

 

• Respondent only registered the <speed.tv> and <spike.tv> Domain Names in an attempt to increase traffic to his web site at <inbox.tv>, based on the high incidence of searches for these words, and not to attempt to divert traffic aimed at Complainant’s website; and

 

• The establishment of noncommercial weblogs constitutes a legitimate use under the Policy.

 

C. Additional Submissions

 

In its additional submission, Complainant responds to the genericness allegation, arguing that domain names whose second-level domains are common English words can be transferred under the Policy, and that its marks are not descriptive but merely suggestive of or arbitrary to its television channel.  Complainant also maintains that it need not have a registration for the SPEED mark to have enforceable rights, and that it used the mark SPEED alone prior to Respondent’s registration.  Complainant further argues in support of its allegations of Respondent’s lack of legitimate rights and bad faith.

 

FINDINGS

The Panel finds that Complainant has established that it owns protectable rights in the SPEED marks; that the Domain Name is confusingly similar to those marks; and that the Domain Name was registered in bad faith as defined in the Policy.

 

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

 

The Domain Name incorporates the word “speed” as its single distinguishing component, which is the same word that distinguishes all of Complainant’s SPEED marks.  The “.tv” appendix is functional, indicating a top level domain name commonly associated with television.[1]  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that because addition of country code “.us” fails to add any distinguishing characteristic to domain name, the <tropar.us> domain name is identical to complainant’s TROPAR mark).  In fact, the top-level domain name increases the confusion in this case, as Complainant’s product or service is a television channel, while Respondent’s actions are unrelated to television.

 

Respondent’s contention that Complainant has no rights in the SPEED mark alone, because “speed” is a common and generic English word, is unsubstantiated and unpersuasive.  Over the past several years, Complainant has provided television programming and other related services under the SPEED family of marks, most of which have been federally registered.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (noting that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and that a respondent has the burden of refuting this assumption). 

 

It is true that Complainant only applied to register the SPEED mark alone, rather than in combinations such as SPEED CHANNEL, subsequent to Respondent’s registration of the <speed.tv> domain name.  However, Complainant has submitted sufficient evidence that it used the SPEED mark alone prior to Respondent’s registration.  That Complainant only had common law rights in the SPEED mark alone during this period does not change the analysis.  See Enlightened, Inc. v. Nil, FA 549191 (Nat. Arb. Forum Oct. 18 2005) (ordering transfer of domain name where complainant had only common-law rights); British Corp. v. Renteria, D2000-050 (WIPO Mar. 23, 2000) (noting that Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names”).

 

Respondent’s citations to other federally registered marks for the word “speed” do not dilute Complainant’s rights in the SPEED marks.  Of the twenty-four “live” USPTO marks for the word SPEED, only those belonging to Complainant involve the provision of television services.  The other live marks cover many varieties of goods and services, but do not relate in any way to the provision of television programming.  Complainant’s rights in the SPEED marks in connection with television services have not been harmed.

 

While the word “speed” does have an ordinary meaning and use in the English language and cannot be removed from the language for all purposes, Complainant has overwhelmingly established that it has rights in the SPEED marks (including SPEED alone) in connection with television programming.  Respondent has not met his burden to establish genericness.

 

In short, the Domain Name is confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Respondent does not appear to have any trademark or other intellectual property rights in the Domain Name.  He has abandoned an intent-to-use registration for it.  His business also does not appear to be commonly known by the Domain Name as defined in the Policy.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).  Indeed, Respondent’s business appears to be known by the name “The Inbox Company.”

 

Respondent’s use of the Domain Name to misleadingly divert consumers to a site selling products – including clocks, bookends, statuettes, and other knickknacks unrelated to the concept of “speed” – is not a “legitimate use” under the Policy.  See ICANN Policy ¶ 4(c)(i).  See also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that respondent’s diversionary use of complainant’s mark to attract internet users to respondent’s own website was neither bona fide offering of goods or services nor legitimate noncommercial or fair use of disputed domain names); Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).  Respondent admits that such diversion of traffic to his <inbox.tv> site was his only purpose in setting up the redirection mechanism.

 

The use of a Domain Name for a weblog, as Repondent later did, could constitute a noncommercial or fair use under ICANN Policy ¶ 4(c)(iii).  See Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO Sep. 11, 2005) (finding that respondent had legitimate interest in registration of domain name incorporating respondent’s personal name and used for personal weblog).  However, Respondent’s setting up of a weblog is blatantly pretextual.  Respondent only did so after receiving a cease and desist letter.  The weblog is minimal, and does not appear to have been updated since the day after its creation.  Such a skimpy creation at such a suspect time is not a noncommercial or fair use.

 

Under these circumstances, Respondent lacks any valid rights or legitimate interests in the domain name under ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

As noted above, Respondent’s only commercial purpose in registering the <speed.tv> Domain Name was to redirect internet users looking for Speed Channel online to his website at <inbox.tv>, which sells antique replicas and other curios.  Respondent admits that redirection was the only commercial use to which he put the Domain Name, and that he was seeking to redirect traffic searching for the word “speed.”  Such a practice is evidence of bad faith under ICANN Policy ¶ 4(a)(iii).  See Disney Enters., Inc. v. Dot Stop, supra, Vapor Blast Mfg. Co. v. R & S Tech., Inc., supra.

 

The fact that Respondent does not sell products similar to Complainant does not prevent a finding of bad faith.  Even assuming that consumers, upon reaching and using Respondent’s site, would have sufficient indicia that Complainant was not the source of the products in question, Respondent would still have benefited from “initial interest confusion.”  The user seeking Speed Channel’s website and/or related products and services might purchase products from Respondent instead. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d. 1036 (9th Cir. 1999) (finding that even if Internet users accessing a web site realize that they have reached a site unrelated to the registered mark holder whose name is identical or confusingly similar to the domain name, the domain name operator will still have gained a customer by appropriating the goodwill that the holder of the mark has developed).  See also Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d 102 (D. Mass. 1998) (granting preliminary injunction where, although the two companies were not in direct competition, defendant used plaintiff’s name in the meta-information on its web pages to direct traffic to its website).

 

Respondent’s creation of a weblog at the <speed.tv> domain name is further evidence of bad faith.  This weblog was created only after receiving a cease and desist letter, and so skimpy and unmodified as to constitute a mere pretext.  Cf. Dinex Group, LLC v. Undici Design, FA 231668 (Nat. Arb. Forum Mar. 24, 2004) (bad faith found where respondent stated he wished to set up a weblog to comment on complainant’s restaurants, but failed to do so for over a year).  Respondent’s virtually identical actions in creating a short and similarly-formatted weblog at <spike.tv>, provides further evidence of bad faith.  Like Speed Channel, which operates at <speedtv.com>, Spike TV is another cable television service provider, and it operates on the Internet at <spiketv.com>.  Respondent’s pattern of similar registrations undermines any credibility in its claim to have merely chosen an ordinary English word with no intent to free ride on the goodwill associated with Complainant’s marks.  The weblog’s disclaimer that it is not affiliated with Speed Channel is insufficient to prevent a finding of bad faith.  See Computing Tech. Indus. v. Moran, FA 464331 (Nat. Arb. Forum May 31, 2005) (“Respondent’s use of a disclaimer on its website is not enough to negate Respondent’s bad faith registration and use.”).

 

In sum, Respondent has provided a variety of ever-changing planned or actual uses for <speed.tv>, but its only genuine use has been for purposes of improperly redirecting traffic.  Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith under ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <speed.tv > domain name be TRANSFERRED from Respondent to Complainant.

 

Michael Albert,  Panelist
Dated: November 28, 2005

 

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