UNC-TV v. Gary Tilton

[Indexed as: UNC-TV v. Gary Tilton]
[Indexed as: UNCTV.COM]

National Arbitration Forum
Domain Name Dispute Administrative Decision

Forum File No.:  FA005000094805
Commenced: 10 May 2000
Judgment: 08 June 2000

Presiding Panelist: Judge Paul A. Dorf, (ret.)

Domain name - Domain name dispute resolution policy - Service mark - Identical - Confusingly similar - Legitimate Interest - Bad faith registration - Bad faith use – Common law interest – Former employee.

Complainant operates a statewide Public Television Network for North Carolina.  Complainant registered the mark, UNC-TV as of January 6, 2000 and has used the mark in its operations since 1993.  Respondent is an individual and former employee of Complainant.  Respondent registered the domain name UNCTV.COM in 1999.

Held, Name Transferred to Complainant

It is clear that the domain name UNCTV.COM is identical and confusingly similar to the mark UNC-TV, regardless of the omission of the "-".

Although Complainant's service mark has not been officially accepted by the US Patent office, its application for the mark and its use of the mark since 1993 has established Complainant's common law interest in the mark.  Respondent is not known, nor has it ever been known or identified by the name UNC-TV.  Therefore, Respondent has no legitimate interest in the domain name.

Respondent had actual notice of Complainant's legitimate interest in the mark and notice of Complainant's registration of alternative domain. Respondent registered the domain name to prohibit Complainant from using the name in connection with its corresponding mark.  Respondent offered to sell the domain name for valuable consideration in excess of any out of pocket expenses and threatened to sell the domain name to a third party so it could take advantage of the name's popularity and the likely hood of confusion in order to attract internet users to its own site for commercial gain.  These actions were held to be bad faith registration.

Respondent did not use the domain name in relation to the legitimate offering of any goods or services. Respondent altered the UNCTV.COM  website to include a pornographic image. UNC-TV's programming is geared toward children. The possibility existed that children may stumble on to the pornographic site because of the popularity associated with the ".COM" extension and the similarity between the domain name at issue and the Complainant's registered domain names.  These facts, coupled with Respondent's offer to sell the domain, amounted to bad faith use.

Policies referred to

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

Decision referred to
Dorf, Panelist:-

The above-entitled matter came on for an administrative hearing on June 7, 2000,
before Paul A. Dorf, Arbitrator, on the Complaint of  UNC-TV, hereafter “Complainant” against Gary Tilton, hereafter "Respondent.". There was no
representation on behalf of Respondent. Upon the written submitted record, the
following DECISION is made:

Domain Names:    UNCTV.COM
Domain Name Registrar:   Network Solutions
Domain Name Registrant:   Gary Tilton 
Date of Domain Name Registration: April 2, 1999
Date Complaint Filed:   May 10, 2000 
Response Due Date:   May 31, 2000

The Complainant filed its complaint with the National Arbitration Forum on the above-referenced date.  In compliance with the rules, The Forum transferred the Complaint to the Respondent on May 11, 2000. The Respondent did not submit a response to The Forum within twenty (20) days pursuant to the rules.

That the Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with said Registrar, Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

The manner in which the domain name(s) are identical or confusing are set out herein below:

The University of North Carolina Center for public Television (UNC-TV) is a constituent of the University of North Carolina system, and has been in existence since 1789.  Since 1955 UNC-TV has operated as the statewide Public Television Network for North Carolina.  UNC-TV, text only, is associated with Television Broadcasting Services.  This mark was first used in commerce on 11/01/1993.  Application was made on January 6, 2000 for registration of this service mark with the US Patent office.  Serial number 75/885042 was assigned to the application for registration.  Prior to January 6, 2000, UNC-TV claimed common-law rights in this service mark based on the continuous use of the name for the past seven years in all aspects of its day to day organization operation. 

Since 1993, this organization has used UNC-TV as its official name in all aspects of public business, including on-air broadcast, publicity materials, business letterhead, and the monthly program guide.  The branding effort behind the is extensive and costly, amount to several million dollars in on-air and print advertising alone.

The domain name unctv.com is confusingly similar to UNC-TV, the only differences being the .com extension and the hyphen.  In a graphical representation, the hyphen is omitted and a circular symbol used instead, further blurring the difference between the names.  UNC-TV maintains it's chief internet presence on the unctv.org domain, including its main website at www.unctv.org.  UNC-TV maintains references from unctv.net, unc-tv.org, unc-tv.com and unc-tv.net to www.unctv.org.  Given the familiarity of the .com extension, users, especially children, can be easily confused at not finding the UNC-TV website when using unctv.com.

The Respondent, Gary Tilton, was previously employed with UNC-TV and ceased his employment on October 14, 1994.  Respondent has no current formal association with UNC-TV, is not himself known, nor has any business interests known by the name UNC-TV.

The domain name unctv.org was registered by Complainant on August 23, 1994, which is prior to the date Mr. Tilton ceased his employment with UNC-TV.  On May 11, 1998, UNC-TV registered the unc-tv.org domain and recently registered unc-tv.net, unc-tv.com, and unctv.net, in order to provide consistent use of the UNC-TV name. 

When the Respondent registered the domain name unctv.com, he was clearly aware that the name was in use.

Since the registration of the domain name by the Respondent, he has displayed websites on the domain indicating that the domain name was for sale for amounts clearly well beyond the expenses associated with registered the domain. In July, 1999, UNC-TV offered the Respondent $750.00 for the domain. 

Comments received by UNC-TV viewers and staff indicate that the site was not going unnoticed and an effort was made to purchase the domain name to end the matter. 

No response was made to Complainant's offer.  In January, 2000, the unctv.com website was altered to include a pornographic image. 

As much of UNC-TV's programming is geared toward children, and the possibility existed that children may stumble on to the pornographic site, Complainant felt it was necessary to take some action.  On January 6, 2000, UNCTV's attorney sent a letter asking the Respondent to cease and desist uses of the domain and offered to pay reasonable expenses associated with the transfer of the domain to UNC-TV.  A response was received from the Respondent via e-mail to one of the staff members in the Respondent's former department to the effect that he had received a "threat" from the company lawyer and if UNC-TV was interested in the site, the price would be $5,000.  He also stated that he had decided to sell the site as soon as possible and had several adult vendors that were interested in the site as a great traffic generator.  Since that time, the site has been modified to contain a less inflammatory image.

It appears that the Respondent has made no commercial or fair use of the unctv.com domain.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:

The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant.  For that reason, the undersigned decides that:

a.         The domain names as registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and 

b.         the Respondent has no rights or legitimate interests in respect of the domain
names;  and

c.         the Respondent domain names have been registered and are being used in
bad faith.

It is therefore just, right and proper that the domain name UNC-TV.com be transferred to the Complainant.

Based upon the above findings and conclusions, and pursuant to Rule 4(i),
it is decided as follows:


Domain Name Transferred