Domain name – Domain name dispute resolution policy – U.S. Trademark – California trademark – Generic marks – Identical – Confusingly similar – Legitimate interest – Bad faith use – Bad faith registration – Reverse domain name hijacking – Interactive television.

Complainant has been in business since 1987 and owns United States and State of California trademark registrations for the words Interactive Television, both registered in 1990. Additional applications filed in 1999 were refused by the U.S. Trademark Office. Respondent registered the domain names interactivetv.com in 1999 and interactivetelevision.com in 2000.

HELD, Name Not Transferred to Complainant

Complainant has not established trademark or service mark rights in the term Interactive Television. In light of this determination, the panel need not consider whether the disputed domain names are identical or confusingly similar to Complainant’s mark. Nor need the panel consider whether Respondent has rights or legitimate interest in those domain names, or whether they were registered and used in bad faith.

A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source. A generic term is not entitled to exclusive protection. A registered trademark will be deemed abandoned if it becomes generic, even if the registration has become incontestable.

Statements by Complainant and on Complainant’s web site show the generic nature of the term “interactive television”. Media excerpts contained in the application files seeking registration of “interactive television” are a strong indication that the phrase is generic when used in connection with Complainant’s goods and services. Although not controlling, the Trademark Examiner’s conclusion that the proposed Interactive Television mark appears to be generic is a persuasive indication that the term is generic. The evidence is sufficient to rebut any presumption of validity that might arise from Complainant’s federal registration issued in 1990.

The panel has not made a determination that the name “interactive television” is generic. Rather, serious questions as to whether Complainant has any proprietary rights required the Panel to reject the complaint. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.

Respondent requested a determination that Complainant engaged in reverse domain hijacking. There is insufficient evidence to conclude with certainty that Complainant initiated these proceedings in bad faith.

The decision of the Panel was unanimous.
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO April 13, 2000)
Feathercombs, Inc. v. Sole Products Corp., 306 F. 2d 251 (2d Cir. 1962)
Kellog Co. v. National Biscuit Co., 305 U.S. 111 (1938)
Miller Brewing Co. v. G. Heilemann Brewing Co., 561 F. 2d 75 (7th Cir. 1977)

Statutes referred to

15 U.S.C. 1064(3), 1065
 

Partridge, Kelly, and Mueller, Panelists: -

WIPO Arbitration and Mediation Center 

ADMINISTRATIVE PANEL DECISION

Interactive Television Corporation v. Noname.com

Case No. D2000-0358

1. The Parties

The Complainant is Interactive Television Corporation, a California corporation located in Fair Oaks, California, USA.

The Respondent is Noname.com, located in Fremont, California USA.

2. The Domain Name(s) and Registrar(s)

The disputed domain names are <interactivetelevision.com> and <interactivetv.com>.

The registrar of the disputed domain names is Alabanza, Inc., located in Baltimore, Maryland, USA.

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 filed on April 29, 2000. The response was submitted on May 24, 2000. Respondent requested decision by a three-member panel, and the WIPO
Arbitration and Mediation Center appointed a panel consisting of Mark V.B. Partridge, presiding panelist, David M. Kelly and Milton L. Mueller.

The Panel met by telephone on June 21, 2000, and reached a unanimous decision.

4. Factual Background

Complainant has been in business since 1987. Initially, Complainant "developed an interactive device to allow television viewers to play along at home with game shows as
they were being aired." Complainant sold and advertised a device under license with the producers of the game show Jeopardy! At that time, Complainant claims the
"interactive television" became widely used and recognized for the first time.

Complainant owns a federal registration, Reg. No. 1,605,353, dated July 10, 1990, for a mark consisting of the words "Interactive Television" with the letters "ITV" in a
bolder form. Complainant has also received a Certificate of Registration of Trademark from the State of California, dated June 20, 1990, for "INTERACTIVE TELEVISION ITV integrated therein with the letters ITV in bold."

Complainant operates a web site at www.itvusa.com, at which it advertises "Current Products & Services," including "BIG BOSS, the INTERACTIVE TELEVISION all
purpose TV calculator" and consulting services. Complainant claims on its site that "the interactive nature of television is its greatest and least understood asset."

Complainant’s web site also contains pages, submitted as evidence by Respondent, on which Complainant offers to sell the INTERACTIVE TELEVISION trademarks.
Complainant’s site states:

"Interactive TeleVision The First Great Trademark of the Twenty-First Century."

"BTI Group and Affiliates, a California based securities firm, has been selected to represent the sale of the INTERACTIVE TELEVISION trademarks."

"It’s [sic] name has been widely used to describe everything from interactive products and services, to the coming current revolution of technology associated with the
marriage of television, the world wide web, and computers and VCRs, generally referred to as convergence."

In 1999, Complainant filed additional applications with the U.S. Trademark Office to register "Interactive Television" as a trademark, App. Nos. 75/719624 and 75/720895.
The application files, submitted as evidence by Respondent, include Office Actions dated November 11, 1999, and March 16, 2000, in which the Trademark Examiner
refused registration on various grounds. The Examiner stated that "the proposed mark appears to be generic as applied to the goods and, therefore, incapable of identifying
the applicant’s goods and distinguishing them from those of others." The Examiner’s conclusion was supported by excerpts from various media articles in which the term
"interactive television" was used generically. Although both of these Office Actions were issued prior to the filing of the Complaint in this action, Complainant’s submission
does not address them, and we do not know if Complainant has responded to either action.

Respondent has registered various domain names for the purpose of providing "vanity" email addresses and claims that it made demonstrable preparations to use its
portfolio of domain names prior to any notice of this dispute. Its portfolio includes domain names such as <bridalstore.com>, <wwwconsultants.com>,
<currancystore.com>, <shopdirect.com> and others. It appears that Respondent may own over 400 domain names, all of which are composed of common words or short
phrases from the English language. Respondent registered <interactivetelevision.com> on February 21, 2000, and <interactivetv.com> on December 21, 1999.

On January 25, 2000, BTI Group, on behalf of Complainant, wrote Respondent seeking to discuss "the possible acquisition" of the <interactivetv.com> domain name. On
March 15, 2000, Complainant’s attorneys wrote Respondent demanding that it transfer the disputed domain names to Complainant. There is no allegation or evidence that
Respondent ever offered to sell the disputed domain names.

5. Parties’ Contentions

Complainant

Complainant contends that it has enforceable rights in the term "interactive television," that Respondent’s domain names are identical or confusingly similar to its alleged
mark, that Respondent has no legitimate rights or interest in the disputed domain names and has registered and used those names in bad faith. According to Respondent,
bad faith is shown by the fact that Respondent is warehousing names in which it has no legitimate interest and has failed to respond to Complainant’s communications
about the disputed domain names.

Respondent

Respondent contends that: (1) Complainant lacks any enforceable rights in the term "interactive television;" (2) Respondent has a legitimate interest in the domain names
because it made demonstrable preparations to use them prior to any notice of the dispute; and (3) warehousing descriptive domain names and refusing to respond to
Complainant’s demands is not evidence of bad faith.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with
implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will
confine itself to making determinations necessary to resolve this administrative proceeding. See Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO April 13, 2000)( http://arbiter.wipo.int/domains/decisions/html/d2000-0105.html).

Paragraph 4(a) of the Policy establishes 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:

Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

Respondent has no rights or legitimate interests in respect of the domain name; and

Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

In this proceeding, Complainant has failed to establish the first element necessary to prove that Respondent has engaged in abusive domain name registration. The Panel
determines that Complainant has not established trademark or service mark rights in the term "interactive television." In light of this determination, the Panel need not
consider whether the disputed domain names are identical or confusingly similar to Complainant’s alleged mark. Nor need the Panel consider whether Respondent has
rights or legitimate interests in those domain names, nor whether Respondent’s registration and use of the disputed domain name was in bad faith.

A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source. Feathercombs, Inc. v. Sole Products Corp.,
306 F.2d 251 (2d Cir. 1962). A generic term is not entitled to exclusive protection. Kellog Co. v. National Biscuit Co., 305 U.S. 111 (1938); Miller Brewing Co. v.
G. Heilemann Brewing Co., 561 F.2d 75 (7th Cir. 1977). A registered trademark will be deemed abandoned if it becomes generic, even if the registration has become
incontestable. 15 U.S.C. 1064(3), 1065.

Here, the evidence raises serious doubts about the validity of Complainant’s alleged mark. Our conclusion is based on several factors. 

First, the statements on Complainant’s web site show the generic nature of the term "interactive television." For example, Complainant states that "the interactive nature of
television is its greatest and least understood asset." Complainant also acknowledges that the term is "widely used to describe" interactive products and services. Even the
Complaint in this action states that the term "interactive television" has been widely used.

Second, the media excerpts contained in the application files seeking registration of "interactive television" are a strong indication that the phrase is generic when used in
connection with Complainant’s goods and services.

Third, although not controlling, we find the Trademark Examiner’s conclusion to be a persuasive indication that the term is generic.

Although the Trademark Office had already questioned the generic nature of the Complainant’s mark, Complainant ignored the issue in its submissions. To claim rights,
Complainant merely relies on its trademark registration and the claim that "Complainant has expended considerable time, resources and energy in building consumer
goodwill and recognition of its trademark." Respondent, on the other hand, has predictably mounted a serious challenge to Complainant’s alleged rights. We find the
evidence sufficient to rebut any presumption of validity that might arise from Complainant’s federal registration issued in 1990 when the term "interactive television" was not widely used in a descriptive or generic manner, and conclude that Complainant has failed to meet its burden of proving rights in a trademark or service mark that
corresponds to the disputed domain names.

It is important to note that this Panel has not made a determination that the name "interactive television" is generic. Rather, based on the record before us, serious
questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not
have proprietary rights is better left to a court or trademark office tribunal.

Respondent requested a determination that Complainant has engaged in reverse domain name hijacking within the meaning of Paragraph 15(e) of the Policy Rules. On one
hand, Complainant has presented evidence of a subsisting federal trademark registration for "Interactive TeleVision" and use of that term for some time as a trade name and
trademark. On the other hand, Respondent has clearly rebutted Complainant’s claim of rights in the domain name, and we are troubled by Complainant’s apparent lack of
candor in not disclosing the Trademark Office Actions issued prior to the filing of this Complaint. On balance, however, we do not have enough evidence to conclude with
certainty that Complainant initiated these proceedings in bad faith. 

7. Decision

Complainant has failed to establish rights in the term "interactive television" for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore finds in favor of Respondent.

Mark V.B. Partridge
Presiding Panelist

Milton L. Mueller David M. Kelly
Panelists

Dated: June 26, 2000