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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Broadcasting, Inc. v. Dennis Toeppen
Case No. D2000-0400
1. The Parties
Complainant is CBS Broadcasting Inc., a New York corporation located in New York, New York.
Respondent is Dennis Toeppen, located in Champaign, Illinois.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "twilightzone.com".
The registrar is Network Solutions, Inc., located in Herndon, Virginia.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The complaint was submitted on May 8, 2000. A timely response was submitted on June 2, 2000. Complainant submitted a reply on June 7, 2000, and respondent submitted a sur-reply on June 8, 2000. Mark V. B. Partridge was appointed as a single panelist on June 16, 2000.
4. Factual Background
Complaint is a network broadcast media company, which apparently owns the rights in the well-known television series "The Twilight Zone." Complainant owns federal trademark registrations for the mark THE TWILIGHT ZONE, including Reg. No. 1,398021, dated June 17, 1986, for "entertainment services in the nature of a television program;" Reg. No. 1, 696,570, dated June 23, 1992, for "entertainment services, namely, television program series;" and Reg. No. 1,935,619, dated November 14, 1995, for various types of merchandise.
Complainant is also the owner of a trademark registration for TWILIGHT ZONE, Reg. No. 1, 992,255, dated August 13, 1996, for calzones. This registration was acquired from D.P. Dough, Inc., a Massachusetts corporation. It is a well-established principle of U.S. trademark law that an assignment in gross does not result in a valid transfer of trademark rights. Here, there is no evidence of record providing the date or terms of assignment, and no evidence showing that Complainant uses or licenses the mark for calzones. As a result, I am unable to determine if the assignment resulted in a valid transfer of rights, and do not give this registration any weight in my decision.
Respondent registered the domain name "twilightzone.com" on March 7, 1996. Respondent does not use the domain name for a world wide web site, e-mail or any other commonly addressable Internet function. Instead, Respondent claims it is making use of the domain name in its capacity as an Internet service provider. As explained by respondent:
"As part of providing that service, the Respondent’s equipment must dynamically assign an numeric IP address and a fully qualified domain name to each of its dial-up customers each time a customer established a dial-up connection. . . . [T]he IP address and the fully qualified domain name are randomly assigned from a pool at the initiation of each dial-up session. At the end of the session the IP address and the fully qualified domain name are returned to the pool. . . . By dynamically assigning fully qualified domain names that are unrelated to the primary domain name of his business, the Respondent minimizes the ability of his competitors to accurately estimate his market share."
Other than its bald allegations, Respondent has not provided any evidence to show the true nature of its Internet services. Nothing indicates when its alleged Internet services began operation, how many customers use the service, the charges for the services, or any other details that may be material to this dispute.
Respondent is well-known in the Internet community, having been the subject of several leading law suits over the registration of domain names, including Panavision, Int’l, L.P. v. Toeppen, 141 F.3d 1319 (9th Cir. 1998)(see also cases cited therein). The courts previously found that it was respondent’s business to register trademarks as domain names for the purpose of selling the domain names to the trademarks’ owners. Respondent originally claimed domain names were mere addresses and did not conflict with the trademark rights of others. After receiving the Panavision decision, respondent sent a letter dated April 20, 1998, to Network Solutions, Inc. ("NSI") acknowledging that the court had rejected his position and asking NSI to cancel his registrations of domain names that corresponded to the trademarks of others. Respondent claims he has no interest in selling the domain name to Complainant or any other party.
5. Parties’ Contentions
Complainant contends that Respondent has registered and used the domain name in bad faith as demonstrated by his pattern of conduct in registering the trademarks of others and by failure to use the domain name for a bona fide purpose.
Respondent claims that it no longer registers the trademarks of others for the purpose of resale and that it is making bona fide noncommercial use of the domain name in a manner which cannot misleadingly divert consumers.
Respondent also claims Complainant’s mark is THE TWILIGHT ZONE, which is not the same as the domain name "twilightzone.com".
6. Discussion and Findings
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Similarity Between Domain Names and Trademark
In this case, I find that the domain name "twilightzone.com" is confusingly similar to Complainant’s mark THE TWILIGHT ZONE. The initial article "the" is not a distinguishing feature: it is likely to be overlooked by most consumers. Similarly, the addition of .net or .com or the absence of the space between the words is not significant in determining similarity.
Complainant’s trademark rights in THE TWILIGHT ZONE long predate this dispute. Accordingly, I conclude that Complaint has established the first element of its claim.
B. Respondent’s Legitimate Interest In Domain Names.
Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in the domain name:
(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Here, there is no evidence that Respondent made "demonstrable preparations" to use the domain name in connection with a bona fide offering of goods or services prior to the dispute. While respondent claims it is now using the domain name in connection with Internet services, it gives no evidence as to when that alleged use began. Also, there is no contention that Respondent has been commonly known by the domain name.
Respondent claims that it is making legitimate, noncommercial use of the domain name without intent to divert consumers or to tarnish the trademark. Indeed, there is no indication that it has done anything to tarnish Complainant’s mark. Similarly, the manner in which Respondent claims to use the domain name does not seem calculated to divert traffic. Were this the only evidence of Respondent’s use, I might find Respondent’s position more persuasive. However, based on an evaluation of all the evidence, including Respondent’s pattern of past conduct, and the lack of details about its alleged Internet services, I cannot accept Respondent’s claim that its use of the domain name is legitimate, noncommercial use. First, in the absence of evidence to the contrary, it appears that Respondent’s Internet services are a commercial activity. Second, Respondent’s explanation seems to be a pretense created after the fact for hoarding domain names that may be sought by the owner of a similar trademark. Accepting the facts as stated by Respondent, there is no legitimate reason for it to use a domain name corresponding to the well-known mark of another as one of the names its randomly assigns to its dial-up customers. Accordingly, I conclude that Respondent lacks any legitimate rights or interests in the domain name.
C. Bad Faith Registration and Use
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:
(1) circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
(2) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
(3) registration of the domain name for the purpose of disrupting the business of competitor; or
(4) "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark . . ."
The Policy specifically notes that these examples of bad faith registration and use are not exhaustive.
Here, it is apparent that Respondent’s initial registration of the disputed domain name was made in bad faith under the terms of the current policy. The record shows that the domain name was registered as part of a pattern of conduct to profit through the resale of well-known trademarks. Prior to the Ninth Circuit decision in Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), Respondent admits it was his practice to register second level domain that corresponded to the trademarks of others. According to the federal court, it was his "business" to register trademarks as domain names and then to sell the domain names to the trademarks’ owners. Panavision International v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996). After the Ninth Circuit decision, which Respondent chose not to appeal, Respondent voluntarily canceled his registration of many domain names, not including the domain name at issue. He continued to hold this domain name, because, in his view, the domain name was not the same as or confusingly similar to Complainant’s mark. In that regard, as noted above, he was wrong.
The more difficult question is whether Respondent has used the domain name in bad faith. It seems to now be common for clever cybersquatters to avoid relief under the Policy by not making any actual use of the domain name. Other decisions under the Policy have questioned such tactics.
In Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO, February 18, 2000)(http://www.wipo.int/amc/en/domains/decisions/html/d2000-0003.html), the Panel found that passive holding of a domain name could amount to bad faith use, stating:
Has the Complainant proved the additional requirement that the domain name "is being used in bad faith" by the Respondent? The domain name "telstra.org" does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.
This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. 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.
Thus, it is clearly important under the Policy to consider all of the circumstances surrounding the registration and use of the domain name to determine if the case involves an abusive registration. Here, Toeppen was in the business of registering domain names for the purpose of selling the domain name to the owners of the trademarks. He was engaged in that business at the time he registered the domain name in dispute. When he registered the domain name, he knew of Complainant’s prior use of its mark, he had no demonstrable good faith plan for use of the domain name, and he had no legitimate interest in the name. After his original plans were held to be in bad faith by a United States Federal Court, Respondent, knowing of complainant’s objections, switched tactics and began using the disputed domain name as a temporary, randomly assigned email address for the purpose of circumventing the Policy. Considering the circumstances as a whole, I believe that Respondent’s actions should be viewed as bad faith use of the mark.
I find that the domain name "twilightzone.com" is identical or confusingly similar to the Complainant’s trademark, that Respondent has no rights or legitimate interest in the domain name, and that the Respondent has registered and used the domain name in bad faith. Therefore, I find in favor of Complainant and grant its request for transfer of the domain name in accordance with Rule 4(i) of the Policy.
Mark V.B. Partridge
Dated: July 6, 2000