National Cable Satellite Corporation v Gearwood.com

Claim Number: FA0012000096194

The Complainant is National Cable Satellite Corporation, Washington, DC, USA ("Complainant"). The Respondent is Gearwood.com, Fredericktown, MO, USA ("Respondent").

The domain names at issue are "cspan2.org", "c-span2.org", "cspan2.com", registered with Network Solutions, Inc.

The undersigned certifies that he has acted independent and impartially and, to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on December 4, 2000; The Forum received a hard copy of the Complaint on December 6, 2000.

On December 8, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that domain names "cspan2.org", "c-span2.org" and "cspan2.com are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 28, 2000, pursuant to the Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

Complainant owns and operates C-SPAN, C-SPAN2 and C-SPAN3, nationally known producers of public affairs television distributed by cable television and satellite. "C-SPAN" is an acronym for "Cable Satellite Public Affairs Network." C-SPAN2 provides gavel-to-gavel coverage of the United States Senate. When the Senate is not in session, primarily during the weekend, C-SPAN2 distributes programming under the title "Book TV" related to books, authors and publishing.

Complainant has utilized the service mark C-SPAN2 since 1986. The U.S. Patent and Trademark Office registered the mark on July 15, 1997 (Reg. No. 2,079,332) (the "Mark"). Complainant also has registered the service marks C-SPAN (Reg. No. 2,081,620) and C-SPAN3 (Reg. No. 2,081,632). Complainant registered the domain name C-SPAN.ORG in October 1993 and has used it since that time. It registered the domain name C-SPAN2.COM in January 2000.

Amazon.com has a permissive "Associates Program" that permits a person to link his or her website to Amazon.comís site and earn commissions on the sale of products resulting from the line. A user who links to Amazon.comís site through the website has full access to all of Amazon.comís products. The user who goes directly to the site using the Domain Names also has access to all products.

On January 12, 2000 and November 10, 2000, Complainant contacted James Gebert, the billing contact for GearWood.com, by telephone and letter and requested that GearWood.com transfer the domain names CSPAN2.COM and CSPAN2.ORG to Complainant and offered to handle the transfer and pay associated costs. Mr. Gebert refused to transfer the domain names and did not offer to sell the domain names to Complainant.

Complainantís Complaint and Respondentís Response.

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."

Section 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:

Section 4(b) provides:

The Complainant bears the burden of proof on these issues.

Here, the domain names are identical to the Mark. The Markís having a space between "CSPAN" and "2" does not deprive it of similarity with the domain names.

As to the second element of Section 4(a), Respondentís registration of the domain names could be said to afford it rights in the name. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A "right" bespeaks of a legal entitlement such as a mark. An "interest" is something less. It could be found in good faith use of a name or generic term as a link to another web site truly offering goods and services, significant promotional expenses with respect to a name or generic term or an established use of the name term prior to registration.

Here, the Respondent has developed the site to provide goods and services. There appears to be no legitimate reason, however, for use of a well-known name. Respondentís contention that its service is a span from one site to another is ingenious, but does not explain the use of the "C" or "2". Thus, it appears that Respondent has no legitimate interest in the domain names.

Here, Rule 4(d)(iv) applies. The use of "CSPAN2" indicates an intention to attract users to the site through confusion with Complainantís Mark as to the affiliation of the site, and also relates to Complainantís "Book TV" programming. That Respondent has recently changed the site to state an absence of such affiliation and to provide a link to CSPAN2.com is given no weight given that it occurred after Complainantsí second letter to Respondent and as the Complaint was being filed.

I have previously held that similar attempts made after receipt of a letter from Complainant and the filing of a Complaint does not contradict the bad faith in registering and use of a domain name in violation of one of the sub-sections of Rule 4(b). See Distinctive Designs Intíl, Inc. v. distinctivedesigns.com, FA 95478 (Nat. Arb. Forum Oct. 5, 2000); Methodist Urology, LLC v. Urology of Indiana, FA 95609 (Nat. Arb. Forum Oct. 17, 2000).

It is decided that Network Solutions, Inc. should transfer the domain names to Complainant.