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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting Inc. v. Sale’s (NYCBS-DOM) et al.
Case No. D2000-0255
1. The Parties
Complainant is CBS Broadcasting Inc., a New York corporation with its principal place of business at 51 West 52d Street, New York, New York 10019, U.S.A. ("CBS"). According to the caption of the complaint, "Respondent" is (a) "Sale’s (NYCBS-DOM)" and (b) "Avner Haleah d/b/a Sale’s (NYCBS-DOM)"(hereinafter sometimes referred to collectively as "Respondent"). As stated in the complaint, Respondent’s address is 45 West 70th Street, New York, New York 10023, U.S.A. (Sale’s).
2. Domain Name and Registrar
The domain name in issue is "NYCBS.COM". The registrar is Network Solutions, Inc.
3. Procedural History
On April 3, 2000, CBS transmitted a copy of CBS’s complaint to Respondent by certified mail, postage-prepaid (complaint, Paragraph 16).
The WIPO Arbitration and Mediation Center (the Center) received CBS’s complaint on April 4, 2000 (electronic version) and on April 5, 2000 (hard copy version). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). CBS made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 11, 2000.
The complaint, at Paragraph 6, pages 3 - 4, identifies (a) Sale’s (NYCBS-DOM, 45 West 70th Street, New York, New York 10023, as "the Respondent", and (b) as the administrative contact for Sale’s, Avner Haleah, Sale’s, 45 West 70th Street, New York 10023, telephone: 212 362 9835, and e-mail:email@example.com.
On April 7, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On April 10, 2000, Network Solutions transmitted via email to the Center Network Solutions’ Verification Response, confirming the registrant is Sale’s, stating the administrative contact is Avner Haleah and the technical contact is Domain Namereserve, confirming that "Network Solutions’ 4.0 Service Agreement is in effect," and stating "The domain name NYCBS.COM is in ‘Active’ status."
On April 11, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier, email and fax (c/o Domain Namereserve, fax: 1 407 322 1901) to:
Attn: Avner Haleah
45 West 70th Street
New York, NY 10023
The Notification (a) stated that the Policy "is incorporated by reference into your Registration Agreement ... pursuant to which you are required to submit to and participate in a mandatory administrative proceeding," and (b) set out inter alia the circumstances under which this proceeding commenced, the requirements for communicating with the Center and CBS, the last day for sending "your Response to the Complainant and to us is April 30, 2000," and the consequences of Respondent’s being in default. In addition, the enclosed Complaint (Paragraph 10) and the Complaint Transmittal Cover Sheet both advised Respondent that the Policy is incorporated by reference into Respondent’s Registration Agreement. A copy of the Policy was annexed to the Complaint as Exhibit B.
On May 1, 2000, the Center transmitted Notification of Respondent Default via post/courier, email and fax (c/o Domain Namereserve, fax: 1 407 322 1901) to:
Attn: Avner Haleah
45 West 70th Street
New York, NY 10023
On May 1, 2000, the Center received from "AVIPC@aol.com" the following email message, verbatim:
"Subject: Re: Domain Name Case No. D2000-0255 <nycbs.com>/Default
"you are not from new York city
"I don’t know you
"I did not respond to forin country
"if any q or req
"212 362 9835"
On May 2, 2000, the Center advised the parties via email, and Respondent also by post/courier and fax, that David W. Plant, Esq. had been appointed as the panelist in this proceeding.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint is based (Paragraph 12) on two service marks, registered in the U.S. Patent and Trademark Office pursuant to two registrations, copies of which appear at Exhibit C to the complaint, viz.:
CBS Reg. No. 852,481 July 9, 1968 1
CBS and eye Reg. No. 777,750 September 22, 1964.
CBS avers (Paragraph 12, page 5) that CBS has used "the CBS mark" since at least 1933, and CBS is the owner of the two "valid, subsisting and existing" service mark registrations.
b. The Complaint
The grounds for the complaint are:
Paragraph 12, pages 5 - 6 -- Over the past 65 years, CBS has spent "a substantial sum of money" advertising and promoting its services under "the CBS mark," which has created "a great deal of goodwill and popularity for the CBS mark."
Paragraph 12, page 6 -- CBS also has a "strong presence" on the Internet, through its ownership interest in at least five websites that include the term "CBS", viz.: CBS.COM, CBSNEWS.COM, CBS.SPORTSLINE.COM, CBS.MARKETWATCH.COM, and CBS.HEALTHWATCH.COM.
Paragraph 12, page 6 -- CBS has used the CBS mark in marketing, promoting and selling a wide variety of merchandise in stores and "over the Internet on the CBS.COM website," for which CBS has received "significant revenues."
Paragraph 12, page 6 -- As a result of CBS’s activities "the CBS mark" has achieved wide recognition, the public has come to associate "the CBS mark" with services originating from or approved by CBS, "the CBS mark" has become an extremely valuable symbol of CBS with "substantial commercial magnetism," and has become a "famous mark."
Paragraph 12, page 7 -- Respondent’s domain name NYCBS.COM, registered April 28, 1999, is confusingly similar to "the mark CBS."
Paragraph 12, page 7 -- Respondent registered the domain name in bad faith and has no rights or legitimate interests in the domain name.
Paragraph 12, page 7 -- Registrant is not commonly known by the name CBS or NYCBS.COM.
Paragraph 12, page 7 -- Respondent’s administrative contact, Avner Haleah, has "telephoned and e-mailed CBS, offering to sell the NYCBS.COM domain name to CBS for $30,000." A copy of Mr. Haleah’s email is at Exhibit D to the complaint. (The email is from "AviHaleah@aol.com", is dated January 13, 2000, and states:
"nycbs.com domain name for sale $30,000.00 to cbs.com 212 362 9835.")
Paragraph 12, page 7 -- Respondent’s bad faith is confirmed because Respondent did not begin to offer services at the Web site until after he received notice from CBS of this dispute.
Paragraph 12, page 7 -- Respondent offers on its Web site links to other sites, including a link to 1010WINS.COM, owned by CBS. CBS has not granted Sale’s permission to link to the site.
In its complaint, CBS requests that the NYCBS.COM domain name be transferred to CBS.
c. The Response
Neither Sale’s nor Avner Haleah has submitted a response to the complaint. The only communication from anyone purportedly affiliated with Respondent is the May 1, 2000, email referred to in Section 3 above.
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that CBS must prove, with respect to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the corresponding CBS mark, and
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.a.(ii) above.
a. Identity or Confusing Similarity
Respondent’s failure to respond to the complaint does not relieve CBS of its burden to prove this element, as well as the other two elements, set out in Paragraph 4.a. of the Policy. However, Respondent’s failure to deny any of CBS’s averments permits this panel to take CBS’s averments as true and to draw appropriate inferences.
CBS urges (complaint, Paragraph 12, page 7) the domain name NYCBS.COM is confusingly similar to "the CBS mark." CBS does not assert that the domain name in issue is identical to a CBS service mark. Thus, CBS must prove confusing similarity between the domain name in issue and a CBS service mark. (For purposes of this decision, we need consider only the CBS service mark that is the subject of U. S. Registration No.852,481.)
On its face, the NYCBS.COM domain name is for purposes of this dispute confusingly similar to the CBS service mark. The domain name in issue identifies a Web site that the ordinary consumer would likely believe was operated or sponsored by CBS or otherwise affiliated with CBS. This is especially true in light of the well-known nature of the CBS mark and CBS’s operation of or affiliation with at least five Web sites that incorporate the CBS mark in each of their domain names. Accordingly, the ordinary consumer would likely believe that whatever services or information are provided at the NYCBS.COM Web site are provided by or with the approval of CBS. Mr. Haleah’s offer to sell NYCBS.COM to CBS is entirely consistent with this inference
b. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) validity of the CBS service marks, (2) CBS’s rights in those marks with respect to CBS’s services, (3) the goodwill associated with those marks, or (4) any fact averred by CBS as to CBS’s use of the marks, promotion of the marks, sales of services and goods under the marks, and the value of the marks to CBS.
Nor has any challenge been leveled with respect to CBS’s averments (complaint, Paragraph 12, page 7) (1) "Respondent is not commonly known by the name CBS or NYCBS.COM," and (2) "Respondent did not begin to offer services at the Web site, until after he received notice from CBS of this dispute."
In light of the record here, it is clear that Sale’s and Mr. Haleah have no rights or legitimate interest in NYCBS.COM. Mr. Haleah’s offer to sell the domain name to CBS is also entirely consistent with this inference.
c. Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration and use are to be proved by CBS.
CBS avers (complaint, Paragraph 12, page 7) (a) Respondent "registered" the domain name in bad faith, and (2) Respondent’s bad faith is "further confirmed" because Respondent did not begin to "offer services" at the Web site until after he received notice from CBS of this dispute. These CBS averments of bad faith as to registration and use stand unchallenged. They are buttressed by Mr. Haleah’s offer of January 13, 2000, to sell the domain name to CBS.
The foregoing events make it abundantly plain that Respondent both acquired and used the domain name in issue primarily for the purpose of selling the domain name registration to CBS for valuable consideration far in excess of Respondent’s out-of-pocket costs directly related to the domain name. It is also fair to infer from the CBS averments that, by using the domain name after receipt of notice from CBS, Respondent intentionally attempted to attract, for commercial gain, Internet users to the Web site by creating a likelihood of confusion with the CBS service mark.
d. Paragraph 4.c. Factors
With respect to the domain name in issue, Sale’s and Mr. Haleah have failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:
(i) before any notice by CBS to Respondent of the dispute, Respondent’s use of or preparation to use the domain name was in connection with a bona fide offering of goods or services -- indeed, CBS avers that Respondent did not offer services until after Mr. Haleah received notice of this dispute from CBS,
(ii) Sale’s, Mr. Haleah, or a related entity has been commonly known by the domain name -- CBS avers that the contrary is the case, and
(iii) Respondent is making legitimate noncommercial or fair use of the domain name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" -- from the uncontested averments of CBS, it is clear on this record that Sale’s and Mr. Haleah have not made any noncommercial or fair use of the domain name without intent for commercial gain, and they very likely intended to misleadingly divert consumers.
This panel has jurisdiction of this dispute. Respondent has in fact received notice of the commencement of this proceeding, the Policy, the complaint, Respondent’s default, and the consequences of Respondent’s default.
In light of the foregoing, the Panel decides CBS has proved (a) the domain name NYCBS.COM registered by Respondent and in issue here is confusingly similar to the corresponding service marks of CBS, (b) Respondent has no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel requires that the registration of the NYCBS.COM domain name be transferred to CBS.
David W. Plant
May 8, 2000
1. The complaint refers to July 31, 1967, as the registration date. This is the date of the application for registration.