v.
Noname.com
[Indexed as: Interactive Television v. Noname.com]
[Indexed as: INTERACTIVETELEVISION.COM et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0358
Commenced:
Judgment: 26 June 2000
Presiding Panelists: Mark V.B. Partridge, David M. Kelly, and Milton M. Mueller
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 Complainants 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 Complainants 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 Complainants goods and services. Although not controlling, the Trademark Examiners 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 Complainants 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."
Complainants web site also contains pages, submitted as evidence by
Respondent, on which Complainant offers to sell the INTERACTIVE TELEVISION
trademarks.
Complainants 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."
"Its [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 applicants goods and distinguishing them from those of others."
The Examiners 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, Complainants 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, Complainants 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 Respondents 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 Complainants
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
Complainants 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:
Respondents 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
Respondents 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 Complainants alleged mark. Nor need the Panel consider whether
Respondent has
rights or legitimate interests in those domain names, nor whether Respondents
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 Complainants alleged mark. Our conclusion is based on several factors.
First, the statements on Complainants 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 Complainants goods and services.
Third, although not controlling, we find the Trademark Examiners conclusion to be a persuasive indication that the term is generic.
Although the Trademark Office had already questioned the generic nature
of the Complainants 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 Complainants alleged
rights. We find the
evidence sufficient to rebut any presumption of validity that might
arise from Complainants 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 Complainants 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 Complainants
claim of rights in the domain name, and we are troubled by Complainants
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
Domain Name Not Transferred