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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting, Inc. v. LA-Twilight-Zone
Case No. D2000-0397
1. The Parties
The Complainant is CBS Broadcasting, Inc., a corporation organized in the state of New York, United States of America (USA), with a principal place of business in New York, New York.
The Respondent is LA-Twilight-Zone, with an address in Bakersfield, California, USA.
2. The Domain Name and Registrar
The disputed domain name is "TWILIGHT-ZONE.NET".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
The Complainant initiated the proceeding by the filing of a complaint via e-mail and courier, received by the WIPO Arbitration and Mediation Center ("WIPO") on May 8, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On May 11, 2000, WIPO completed its formal filing compliance requirements checklist.
On May 12, 2000 WIPO transmitted notification of the complaint and initiation of the proceeding to the Respondent via e-mail, facsimile, and courier. This date represents the commencement of this administrative proceeding (Rules for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). On May 12, 2000, WIPO transmitted notification of the complaint to ICANN, Network Solutions, and Complainant’s authorized representative.
On June 2, 2000, WIPO transmitted notification to Respondent of its default in responding (to the Complaint transmitted on May 8, 2000) via e-mail, facsimile, and courier.
On June 7, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 20, 2000.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has provided copies of its various U.S. federal trademark registrations for the mark TWILIGHT ZONE, in International Classes 25, 28, 30, and 41. Complainant’s two registrations in International Class 41 are for entertainment services for a television program, with first use in October, 1959. The registration for the mark in International Class 25 is for T-shirts, sweatshirts, hats, caps, and shirts, with first use in March, 1992. The registration for the mark in International Class 28 is for coin-operated pinball game machines, with first use in April, 1992. The registration for the mark in International Class 30 is for dough encased cheeses, vegetables and meats in the nature of calzones, with first use in April 1991.
Network Solutions’ WHOIS database query response indicates that LA-Twilight-Zone, with an address in Bakersfield, California, is the registrant of the domain name TWILIGHT-ZONE.NET. The record of this registration was created on March 21, 1999, and was last updated on the same date. As of the date of this opinion, there is no website available at the domain name.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, which is the Uniform Domain Name Dispute Resolution Policy, as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
Complainant states that it has used the TWILIGHT ZONE mark since at least 1959 in connection with television programming services and other related products, such as videocassettes and merchandise items bearing the mark. As noted in the preceding section, Complainant is the owner of several U.S. federal registrations in various classes for the mark. Complainant alleges that over the last forty-five years, it has spent a "substantial sum of money advertising and promoting its services under the TWILIGHT ZONE mark, which has resulted in the creation of a great deal of goodwill and popularity for the mark."
Complainant states that it has been actively licensing the mark or otherwise authorizing the use of the mark for various goods and services, such as clothing, comic books, theme-park rides, educational reading programs, automobiles, greeting cards, coin-operated pinball machines, and traffic safety promotions. Complainant alleges that it has received "substantial revenues" from these activities.
Complainant alleges that its long use of the mark, combined with substantial advertising and promotional activities in connection with the mark, has created substantial trademark rights in the mark for CBS, and furthermore, that the mark has become famous.
Complainant alleges that the Respondent’s TWILIGHT-ZONE.NET domain name is confusingly similar to its TWILIGHT ZONE mark. Complainant alleges that the Respondent registered the domain name in bad faith, and that Respondent has no rights or legitimate interests in the domain name. Complainant alleges that Respondent is not commonly known by the name TWILIGHT ZONE or TWILIGHT-ZONE.NET. Complainant alleges that Respondent’s bad faith is evidenced by its failure to develop a website at the domain name and failure to make any other good-faith use of the domain name.
Complainant states that it sent a letter to Respondent after learning of Respondent’s registration, providing notice of Complainant’s trademark rights , asserting that Respondent’s registration violated those rights, and requesting the transfer of the domain name. Respondent did not reply to Complainant’s letter.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy instituted three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect to the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of these three elements must be proved by a complainant to obtain relief. Paragraphs 4(b) and 4(c) of the Policy provide further nonexclusive criteria for determining whether the Registrant has engaged in abusive domain name registration with respect to subparagraphs 4(a)(ii) and 4(a)(iii).
Because the Respondent has defaulted in providing a response to the allegations of the Complainant, certain factual conclusions must be drawn by the Panel on the basis of Complainant’s undisputed representations.
A. Identity of Respondent’s Domain Name and Complainant’s Trademarks
The Panel finds that the Complainant has rights in the famous TWILIGHT ZONE mark for a variety of goods and services. Furthermore, the Panel finds that the Respondent’s TWILIGHT-ZONE.NET domain name is virtually identical and confusingly similar to the Complainant’s TWILIGHT ZONE mark. The addition of a hyphen does not decrease the confusing similarity between the domain name and the mark.
Thus, the Panel finds for the Complainant on the first element, that the Respondent’s domain name is identical or confusingly similar to a trademark and service mark in which the Complainant has rights.
B. Respondent’s Rights or Legitimate Interests in the Domain Name
The Panel next considers the nonexclusive list of factors found in Paragraph 4(c) of the Policy to determine whether the Respondent has rights or legitimate interests in the TWILIGHT-ZONE.NET domain name.
The Panel must make its determination based only upon its own inferences and the Complainant’s allegations, since the Respondent failed to respond to the Complaint. The Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the domain name, since no website is available at the domain name, and Respondent has not provided any evidence that it has done so in the past. The Panel finds that the Respondent has not been commonly known by the domain name, and Respondent has not provided any evidence of such. The Panel further finds that the Respondent has not made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, since the Respondent has not provided any evidence of such, and there is no website at the domain name providing contrary evidence.
Thus, the Panel finds for the Complainant on the second element, that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Respondent’s Registration and Use of the Domain Name
The Panel next considers the nonexclusive list of factors found in Paragraph 4(b) of the Policy to determine whether the TWILIGHT-ZONE.NET domain name has been registered and is being used in bad faith. The Panel notes again that the factors found in paragraph 4(b) of the Policy are "without limitation" and as such, the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith. The Panel believes that this case is just such a situation.
The Panel finds that in the context here, the Respondent registered and is using the domain name in bad faith. Respondent has not provided any evidence to controvert the Complainant’s allegation that it registered the domain name in bad faith. No evidence has been submitted that disproves a finding of bad faith. Any future use of the domain name would do nothing but cause confusion with the Complainant and its mark, except in a few limited noncommercial or fair use situations, which are not evident in this case.
The argument can be made that the lack of a website at the domain name, coupled with the Respondent’s silence, could negate a finding of registration and use in bad faith. However, the Panel finds that it does not; that is, the Panel finds that the Respondent’s inactivity and silence with regard to the domain name and this dispute does not necessarily prevent a finding of bad faith. Another panel has made just this determination:
"The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Arbitration and Mediation Center, Case No. D2000-0003, para. 7.9 (Feb. 18, 2000).
The Panel finds that there is no evidence that the domain name was registered or is being used in good faith. The Panel determines that in light of the long use and fame of the Complainant’s mark, that the Respondent’s conduct to this date is evidence of bad faith on the part of the Respondent. The Panel assumes that if the Respondent had a good faith intent in registration and use of the domain name, it would have responded either to the Complainant’s letter and/or the Complaint, or actually used the domain name in some good faith manner.
Thus, the Panel finds for the Complainant on the third element, that the domain name has been registered and is being used in bad faith.
For the foregoing reasons, the Panel decides:
(i) That the TWILIGHT-ZONE.NET domain name registered by the Respondent is confusingly similar to the TWILIGHT ZONE trademarks in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests with respect to the domain name TWILIGHT-ZONE.NET; and
(iii) The Respondent’s TWILIGHT-ZONE.NET domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name TWILIGHT-ZONE.NET be transferred to the Complainant.
Dated: June 19, 2000