Educational Broadcasting
Corporation v. DomainWorks Inc. c/o Eric Woodward
Claim Number: FA0701000882172
PARTIES
Complainant is Educational Broadcasting Corporation (“Complainant”), represented by Ellen
A. Hochberg, of Debevoise & Plimpton LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thirteen.com>, registered with Fabulous.com
Pty Ltd.
PANEL
A three- member Panel was constituted. The undersigned Panelists
certify that they have acted impartially and to the best of their knowledge and
have no known conflict in serving in this proceeding.
Mr. Debrett G. Lyons was appointed as Chair of the Panel and Mr. Peter L. Michaelson and Mr. David E. Sorkin were appointed as his Co‑Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 8, 2007.
On January 7, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <thirteen.com> domain name is
registered with Fabulous.com Pty Ltd. and
that Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 10, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 30, 2007 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@thirteen.com by e-mail.
On January 20, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of twenty (20) days to respond to the Complaint due to extenuating circumstances. Complainant did not consent. On January 26, 2007, the National Arbitration Forum, without Complainant’s consent, granted Respondent an extension of twenty (20) days and set a new deadline of February 14, 2007 for a filing of a Response.
A timely Response was received and determined to be complete on February 14, 2007.
On February 15, 2007, the parties requested a stay of the proceeding
for a one-time period of forty-five (45) days until April 1, 2007, pursuant to
Supplemental Rule 6(b)(i). The National
Arbitration Forum granted the stay on February 15, 2007, requiring either party
to submit a request to lift the stay by April 1, 2007 or else the Complaint
would be withdrawn.
On March 27, 2007, Complainant filed a request to lift the stay of
arbitration. The National Arbitration
Forum lifted the stay on March 27, 2007 and let the case proceed.
On March 28, 2007, the National Arbitration Forum received a timely
Additional Submission from Complainant and determined it to be in compliance
with Supplemental Rule 7.
On April 5, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Mr. Debrett G. Lyons (Chair), Mr. Peter L. Michaelson
and Mr. David E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the disputed domain name is identical to a
trademark in which it has rights, that Respondent has no rights or legitimate
interests in the domain name, and that Respondent registered and used it in bad
faith.
In particular, it alleges a common law reputation in the trademark
THIRTEEN in
B. Respondent
Respondent makes no admission or denial that the disputed domain name
is identical or confusingly similar to Respondent’s trademark. It strongly denies knowledge of Complainant’s
mark at the time it registered the domain name and argues that Complainant’s
registered trademark rights all post-date the domain name registration by many
years.
Respondent argues that it has a legitimate business in registering and
dealing in generic domain names and that the dictionary word THIRTEEN was
perceived as potentially desirable to any number of traders. It was therefore registered and added to
Respondent’s stable of marks for sale.
It submits that since that business does not offend the Policy and has
previously been held legitimate, it therefore follows that it has a legitimate
right and interest in the disputed domain name.
Respondent therefore denies having registered the domain name in bad
faith. It also denies any bad faith use
of the domain name and submits that before notice of the dispute, the domain
name pointed to <blemish.com>, another name registered to Respondent,
which carried links to skincare and beauty products of interest to teenage
girls. Respondent states that it has no
recollection of having been contacted by Complainant.
Respondent submits that the Complaint is an abuse of the administrative
proceedings and petitions Panel to find that Complainant has engaged in
so-called “reverse domain name hijacking” since at the time the Complaint was
filed, Complainant either knew or should have known that it could not show that
the domain name was registered in bad faith.
C. Additional Submissions
Both parties made additional submissions and the admissibility and
content of those submissions is considered under “Discussion” below.
FINDINGS
The Panel makes the following factual
findings:
1.
Complainant is a non-profit corporation
registered under the laws of the State of
2. Complainant brands its goods and services with various trademarks, including THIRTEEN.
3. Complainant has many US Federal trademark and service mark registrations for the mark THIRTEEN in classes 9, 16, 18, 38 and 41 (‘the US Registrations’).
4. Complainant first adopted the internet address <WNET.org> for use in connection with its web-based business which began in 1996.
5. Complainant registered <thirteen.org> in November 1997 and it is now Complainant’s principal web address.
6. Respondent was previously known as CES Marketing Group at which time it described its business as specialists “in the development and marketing of valuable internet domain names”.
7.
Respondent’s business is located in
8. Respondent registered the disputed domain name on March 14, 1998.
DISCUSSION
Preliminary Issue
The Panel has given careful consideration to the admissibility and content of the parties’
Additional Submissions.
Whilst WIPO's Supplemental Rules are silent as to
the treatment of supplemental filings, the National Arbitration Forum's
Supplemental Rules treat such filings under Supplemental Rule 7, which
specifically allows such filings provided that they are: (a) accompanied by an
appropriate filing fee and (b) timely filed.
Such is the case here with the Additional Submissions from both
parties.
This Panel has in the interests of justice and
fairness, accepted the Additional Submissions from both parties and has fully
considered those filings.
See generally, Reichert,
Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006); Deep Foods,
Inc. v. Jamruke, LLC, FA 648190
(Nat. Arb. Forum Apr. 10, 2006); Pierret v. Sierra Technology Group, LLC, FA 472135 (Nat. Arb. Forum July
1, 2005);
Substantive Issues
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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.
(i)
Generally
The Panel is unanimously of the view that if
the only question before it was whether the disputed domain name is identical
to the trademark of the US Registrations, then the answer would be clearly in
the affirmative. Moreover, Respondent
has not denied the claim.
The Panel must however also determine whether
Complainant has rights in the trademark and, ultimately, whether those rights
go towards establishing bad faith on the part of Respondent.
(ii) Registered rights
In the first place, it is well established by former panels that US federally
registered trademarks carry a presumption of validity and are of themselves
adequate proof of rights in a trademark.
In this case, Complainant is the owner of, for example, US Trademark
Registration No. 2,495,086 in class 9 for “pre-recorded video cassettes and
DVDs in the fields of education, news, the sciences, the humanities and the
arts,” and Registration No. 2,652,265 in class 38 for “public television and
cable broadcasting television services,” both filed on October 4, 1999.
Taking account of the first use in commerce
dates indicated for those two registrations leads to a finding that rights in
No. 2,495,086 date from October 24, 1999, whilst rights in No. 2,652,265
commence with its filing date, October 4, 1999.
Accordingly, the Panel holds that Complainant has rights in the trademark
THIRTEEN arising through federal registration from October 4, 1999.
(iii) Common law rights
Complainant's registered trademark rights
dating to 1999 are sufficient as a basis for proceeding under the first prong
of Paragraph 4(a) of the Policy, but the Panel also considers Complainant's
common-law rights here because of their potential relevance to the other two
prongs, particularly bad faith. In
particular, since the domain name was registered in March 1998, it falls to the
Panel to examine what rights Complainant enjoyed prior to that date. Complainant predicates its case on having
acquired common law trademark rights through use of the mark in commerce and
specifically in connection with educational and entertainment services.
It is useful to set out at length what was said in the case of WHM L.L.C. v. Northpoint, Inc., D2005-1134 (WIPO Jan. 27, 2006):
Regarding any distinction in coverage between registered and unregistered marks, paragraph 4(a) of the Policy simply recites: “You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that … (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” [emphasis added]. Nowhere does the Policy contain a restriction that specifically limits its reach to only registered marks. Therefore, given the apparent inclusive nature of the Policy, whether the Complainant has rights to an unregistered mark and hence a protectable interest under the Policy, lies with national trademark law that governs the Respondent’s actions that are the subject of the Complaint. Under American law, rights accrue in unregistered, so‑called “common law”, marks as a result of usage, though limited by geographic and product/service markets in which the mark is used. As evidence of this, one need turn no further than to §43 of the Lanham Act (15 U.S.C. §1125(a)) which states, in pertinent part: “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof … (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person … shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” [emphasis added]
Consequently, numerous panels,
when faced with unregistered marks, have upheld their protectable status in the
Therefore, given that common law trademark rights suffice under the
Policy, then as a threshold matter, a question arises as to whether and if so,
when, common law trademark rights in THIRTEEN arose.
(iv)
Proof of use
Complainant asserts that “for over forty
years, Thirteen has been synonymous with educational television programming” (
Complaint #5). It goes on to state that
it has continuously and extensively used the THIRTEEN mark in connection with
an educational television network in the States of New York, New Jersey, and
At the annual television Emmy Awards, Complainant
claims that it wins numerous awards for its television programming marketed
under the THIRTEEN mark. Complainant
also alleges that it spends over $3.2 million advertising the THIRTEEN mark
each year.
In
For the greater part, these are bald
assertions unsupported by evidence. The
evidence that is put forward for the Panel’s consideration is unconvincing of
any significant public exposure of the trademark prior to March 1998. There is simply no support for the claim that
the trademark has been used for 40 years.
There is no evidence that the mark was first used in 1977. The proof of use which is provided comes
largely from a 2004-5 Annual Company Report which records, as would be expected,
current rather than historical activities.
Complainant alleges maintenance of an active
web presence since 1996 and in support evidences a screenshot of the
<wnet.org> homepage from that time. The Panel observes from that screenshot the
existence of a dominant mark,
"NETSTATION" at the top of the homepage attaching to which is the
symbol “SM” (service mark) and in much less obvious lettering below, “
Thirteen-wnet,” where the word “thirteen” is presented as a logo. Such use -- particularly from Complainant's
own actions in designating the mark "NETSTATION" as its service mark
-- does not reflect trademark use of the term "thirteen," standing by
itself. All that can be inferred from this
page is that Complainant is claiming common law trademark rights in the term
"NETSTATION" and possibly in the composite term
"thirteen-wnet." This page
does not suffice to show any trademark use of the term "thirteen,"
let alone whether any of these three terms has acquired any sufficient
distinctiveness in the relevant market to actually qualify as being a common
law mark. The evidence adduced here is
just deficient for this purpose.
The replacement web address,
<thirteen.org>, would logically have only come into existence after the
corresponding domain <thirteen.org> was registered in November 1997. We have no evidence as to the form or extent
of Complainant’s web presence on March 14, 1998 when the disputed domain name
was registered, four months later.
In short, the Panel finds that the evidence
achieves nothing whatsoever by way of establishing common law rights in the
trademark in
In light of the paucity of the evidence put
forth by Complainant, the Panel is left simply with Complainant’s bald
assertions of reputation of the trademark in
The Panel therefore holds that Complainant
has rights in a trademark which is identical to the domain name registered by
Respondent however those rights owe their existence solely to the US
Registrations and date from no earlier than
October 4, 1999.
Under Policy ¶ 4(a)(ii), it is necessary only
for Complainant to make a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name. Once it does that, the burden
shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) ; AOL LLC v.
Gerberg, FA 780200
(Nat. Arb. Forum Sept. 25, 2006).
Complainant argues
that Respondent is not commonly known by the domain name, because the WHOIS
information lists “DomainWorks Inc.” as the registrant, and nothing else in the
record suggests that Respondent is commonly known by the domain name in
dispute. The Panel finds nothing in the
submissions or the evidence to counter that argument and agrees that Respondent
is not commonly known by the domain name.
Complainant claims
that Respondent is using the domain name as a commercial website displaying
links and advertisements for entertainment services, movies, publications, and
DVDs that are in direct competition with the products and services of
Complainant. Complainant argues that
Respondent is profiting from click-through fees for each consumer it diverts to
these competing websites. The Panel
finds that Respondent’s use of the disputed domain name for these purposes does
not represent a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) ;
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007).
The Panel is not
on balance persuaded that the generic character of the domain name is of itself
sufficient to prove a legitimate interest when in fact the use to which the
name is put bears no connection with the dictionary meaning claimed.
The Panel
accordingly finds that Complainant has also established this second limb of the
Policy.
It is now a commonplace observation that in
order to prevail, Complainant must show both bad faith use and bad faith
registration of the disputed domain name.
On the evidence presented to it, this Panel
is not willing to infer that Respondent had actual knowledge of Complainant's
common-law marks in 1998. Additionally,
this Panel is not convinced that Respondent picked the word
"thirteen" because Complainant was already using it as a trademark,
or for any other reason relating to Complainant.
Absent proof or compelling reasons to infer
that Respondent registered the domain name with Complainant’s business in mind,
there is no bad faith. The Panel finds
on the evidence that the more likely scenario given Respondent’s business is
that it hoped to later sell the domain name at a profit without, at least at
that time, any contemplation of Complainant or a competitor of Complainant. Again, to do so is not bad faith under the
Policy.
Respondent’s act in registering the domain
name preceded the earliest claim to use of Complainant's trademark in commerce
by more than 18 months. It may have been
broadly contemporaneous with the material first being posted to the
<thirteen.org> website but the Panel has no evidence of that material and
instead it is faced with Complainant’s use of an altogether different mark
“NETSTATION,” itself prominently claiming service mark status, from broadly the
same period. There is no evidence at all
of use of the trademark in
The Panel finds no convincing evidence of bad
faith registration and so for that reason is not required to consider
Respondent’s later use of the domain name.
Complainant therefore has failed to establish
the third element under the Policy.
Accordingly, the Complaint must fail.
REVERSE DOMAIN NAME HIJACKING
The Panel cites with approval the case of Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) where it
was said that to prevail on a claim of reverse domain name hijacking, the
respondent must show that the complainant brought the claim in bad faith
despite the knowledge that the respondent has an unassailable right or
legitimate interest in the disputed domain name, or that the respondent lacks
the requisite bad faith registration and use of the disputed domain name.
See Mirama Enters. Inc. v.
NJDomains, Abuse Contact: abuse@mail.com, FA 588486 (Nat Arb. Forum Jan. 16, 2006)
(finding that complainant has engaged in reverse domain name hijacking where
the complainant commenced the proceeding despite possessing knowledge of the
respondent’s rights in the disputed domain name); Microsoft Corp. v. Domain Registration Phil., FA 877979 (Nat. Arb. Forum Feb. 20, 2007)
(considering the respondent’s allegations of reverse domain name hijacking to
be unfounded where the complainant had proven all elements of the Policy);
Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec.
19, 2005) (rejecting the respondent’s assertion of reverse domain name
hijacking argument because there was no evidence that the complainant was using
the Policy other than to declare its rights.)
In this case, Complainant alleges that it
only brought this proceeding after its efforts to contact Respondent regarding
the contested domain name failed. Having
regard to the authorities the Panel finds that this is not an instance of
reverse domain name hijacking because Complainant brought this action in the
good faith belief that it has rights to the THIRTEEN mark. The Panel has already decided that Respondent
did not prove itself to have legitimate interests in the domain name, although
it had not registered the name in bad faith.
Again, this points away from a successful claim of reverse domain name
hijacking and the Panel finds against Respondent on this aspect of the case.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons, Presiding
Panelist
David
E. Sorkin, Panelist
Peter
L. Michaelson, Panelist
Dated: April 18, 2007
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