LIN Television Corporation v. Home in USA; Home in USA Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LIN Television Corporation v. Home In USA and Home In USA, Inc.

Case No. D2000-0257

1. The Parties

The Complainant is LIN Television Corporation, a corporation organized in the state of Delaware, United States of America (USA), with a principal place of business in Providence, Rhode Island, USA.

The Respondent is Home In USA and Home In USA, Inc., with an addresses in Williamsburg,

Virginia, USA.

2. The Domain Names and Registrars

The disputed domain names are WAVYTV.COM; WAVY-TV.COM; WAVYTV10.COM; and WAVY-TV10.COM.

The registrar of the disputed domain names WAVYTV.COM, WAVYTV10.COM, and WAVY-TV10.COM

is Network Solutions, Inc., with a business address in Herndon, Virginia, USA.

The registrar of the disputed domain name WAVY-TV.COM is Internet Domain Registrars,

with a business address in San Francisco, California, 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,

received by the WIPO Arbitration and Mediation Center ("WIPO") on

April 4, 2000, and by courier mail received by WIPO on April 7, 2000. Payment

by Complainant of the requisite filing fees accompanied the courier mailing.

On April 19, 2000, WIPO completed its formal filing compliance requirements

checklist.

On April 26, 2000 WIPO transmitted notification of the complaint and initiation

of the proceeding to the Respondent via e-mail and courier. This date represents

the commencement of this administrative proceeding (Rules for Uniform Domain

Name Dispute Resolution Policy, para. 4(c)). On April 26, 2000, WIPO also transmitted

notification of the complaint to the Complainant’s authorized representative.

The Complainant filed Supplement to its complaint via e-mail, received by the

WIPO Arbitration and Mediation Center ("WIPO") on April 27, 2000,

and by courier mail received by WIPO on May 1, 2000. On April 28, 2000, WIPO

completed its formal filing compliance requirements checklist and supplied the

Respondent with the Supplement via e-mail and courier.

On May 11, 2000, the Respondent submitted its response to the complaint via

e-mail and courier to WIPO and the Complainant.

On May 25, 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

8, 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.

The proceedings have been conducted in English.

4. Factual Background

The Complainant has provided a copy of its United States Federal Communications

Commission License Renewal Authorization dated September 30, 1996 for the television

station WAVY-TV, Channel 10. The Complainant does not own any federal trademark

or service mark registrations for WAVY, WAVY-TV, or WAVY-TV 10. The Complainant

has provided representative samples of advertising and promotional materials

showing its use of its alleged WAVY, WAVY TV and WAVY TV 10 service marks to

promote its television broadcasting services. The Complainant alleges use of

the marks since 1957 in the area of Hampton Roads, Virginia. The Complainant

operates a website promoting its television broadcasting at WWW.WAVY.COM. This

domain name was registered on August 29, 1995.

A Network Solutions’ WHOIS database query response indicates that Home In USA,

with Gilinda Rogers as Administrative, Technical, Zone, and Billing Contacts,

is the registrant of the domain names WAVYTV.COM and WAVYTV10.COM. The records

of these registrations were created on September 2, 1999.

A Network Solutions’ WHOIS database query response indicates that Home In USA

Inc., with Gilinda Rogers as Administrative, Technical, Zone, and Billing Contacts,

is the registrant of the domain name WAVY-TV10.COM. The record of these registration

was created on January 6, 2000.

An Internet Domain Registrars WHOIS database query response indicates that

Home In USA Inc., with Gilinda Rogers as Administrative, Technical, and Billing

Contacts, is the registrant of the domain name WAVY-TV.COM. The record of these

registration was created on March 21, 2000.

The Uniform Domain Name Dispute Resolution Policy (the "Policy"),

as approved by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999, requires that all ".COM" 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

A. Complainant

The Complainant alleges that the service marks WAVY, WAVY TV and WAVY TV 10

have been used by it and its predecessors in connection with television broadcasting

services and programming since 1957 in the Hampton Roads area of Virginia. The

Complainant is the owner of an exclusive license from the Federal Communications

Commission to use WAVY-TV as its call letters. It is local television channel

10.

The Complainant does not own federal trademark registrations for these marks,

but has provided representative samples of advertising and promotional materials

showing its use of its WAVY, WAVY TV and WAVY TV 10 service marks to promote

its television broadcasting services. The Complainant alleges substantial advertising

and promotional expenditures for the station, including $2.5 million since 1998.

The Complainant also promotes its television station and programming at a website

located at the domain name WWW.WAVY.COM, which the Complainant states was established

in April, 1997. The Complainant alleges that it enjoys consistently high ratings

in its viewing area. Thus, the Complainant alleges that its significant marketing

and promotional expenditures, combined with long and extensive use of the call

letters as service marks, establishes common law trademark rights in WAVY, WAVY

TV and WAVY TV 10.

The Complainant discovered the registrations of the WAVYTV.COM and WAVYTV10.COM

domain names in October 1999, and the use of its WAVY TV 10 logo on the corresponding

websites. The logo was used as a link to the Complainant’s website, located

at WAVY.COM. The disputed websites also contained the logo of one of the Complainant’s

competitors and a link to that competitor’s website. The Complainant’s counsel

sent the Respondent a letter dated November 19, 1999 requesting the removal

of its logo from the websites and the transfer of the domain names.

The Complainant states that the Respondent telephoned the Complainant’s counsel

on December 2, 1999, and allegedly stated that she "wanted to design a

website for the geographic region served by [the Complainant’s] WAVY TV 10 television

station and believed the registration and use of the WAVYTV.COM and WAVYTV10.COM

domain names would be a means to attract traffic to that website." The

Complainant alleges that during this conversation, Mr. Rogers agreed to remove

the Complainant’s logo and link from the website, but refused to transfer the

domain names to the Complainant. The disputed websites continued to be identified

by domain names incorporating the Complainant’s marks, and she did not remove

any of the Complainant’s competitor’s logos or those links to their websites.

In a subsequent letter dated December 7, 1999, counsel for the Respondent reiterated

the Respondent’s refusal to transfer the domain names. On January 3, 2000, counsel

for the Complainant sent a letter to the Respondent’s counsel, again asserting

its trademark rights and demanding the transfer of the domain names. Three days

after the date of this letter, the Respondent registered the domain name WWW.WAVY-TV10.COM.

On January 21, 2000, counsel for the Respondent called counsel for the Complainant

and allegedly requested a meeting to discuss business opportunities between

the parties involving the domain names, which the Complainant declined. The

Respondent allegedly offered to sell the domain names to the Complainant for

$30,000. On March 21, 2000, the Respondent registered the domain name WWW.WAVY-TV.COM.

On March 24, 2000, the Complainant alleges that the Respondent posted content

on the websites at the disputed domain names that refer to "Wavy-TV Technology."

The Complainant alleges that the WWWW.WAVYTV.COM, WWW.WAVYTV10.COM, WWW.WAVY-TV.COM,

and WWW.WAVY-TV10.COM domain names are identical or confusingly similar to its

WAVY, WAVY TV and WAVY TV 10 service marks.

The Complainant alleges that the Respondent has no rights or legitimate interests

in respect of the domain names, since before notice of the dispute, the Respondent

had made no demonstrable preparations to use the domain names in connection

with a bona fide offering of goods or services. Specifically, the Complainant

alleges that the Respondent registered the domain names for the sole purpose

of trading upon the goodwill and recognition associated with its marks, through

her admission that she wished to create a website that would attract people

in the Complainant’s television viewing area.

The Complainant alleges that the "Wavy-TV" content posted on the

site in late March, 2000 is an illegitimate attempt by the Respondent to demonstrate

preparations to use the names in connection with a bona fide offering of goods

or services. The Complainant alleges no such "wavy" technology exists,

and that any use of the disputed domain names for any such technology would

still cause confusion with its marks. The Complainant alleges that the Respondent

has never been commonly known by the domain names prior to the dispute.

The Complainant alleges that the Respondent registered and used the domain

names in bad faith because she registered the domain names with knowledge of

the Complainant and with the intent to divert Internet users to her site by

creating a likelihood of confusion with the Complainant’s marks as to the source,

sponsorship, affiliation, or endorsement of her website. Specifically, the Complainant

alleges that her intent in registering the domain names and creating her websites

at those domain names was to divert those computer users who were familiar with

the Complainant and its marks, who were looking for the official WAVY TV website.

The Complainant alleges the use of the Complainant’s marks on the original

two websites is further evidence of the Respondent’s intent to trade off the

Complainant’s marks and cause confusion among the Complainant’s viewers, and

that actual confusion has occurred. Furthermore, the Complainant argues that

initial interest confusion would still occur, no matter what content was posted

on the websites, because of the identical nature of the trademarks and the domain

names. The Complainant argues that there could be no legitimate reason for registering

and using these specific domain names, other than to confuse computer users

and trade on the goodwill established by the Complainant.

The Complainant alleges that the Respondent’s bad faith is further evidenced

by her offer to sell the domain names for $30,000, and her registration of the

WWW.WAVY-TV.COM and WWW.WAVY-TV10.COM domain names after the Complainant had

made its objection to the registration of the WWW.WAVYTV.COM and WAVYTV10.COM

domain names quite clear.

The Complainant alleges that additional evidence of the Respondent’s bad faith

conduct is found in its registration of several other trademarks belonging to

third parties, one of which is pending in a U.S. federal district court; the

Complainant alleges that this shows a pattern of cybersquatting conduct.

B. Respondent

The Respondent denies that the Complainant has any trademark or service mark

rights in the terms WAVY, WAVY TV, and WAVY TV 10, because the Complainant has

not registered the terms with the U.S. Patent and Trademark office, because

the Complainant does not use the symbol "TM" with the terms, because

call letters are not strong marks, and because the Complainant allegedly does

not use the terms in a trademark sense. The Respondent alleges that the Complainant

only has rights in the design form of the terms, but not in the terms themselves.

Furthermore, the Respondent alleges that any alleged rights in the terms are

limited to the television broadcasting context, and do not extend to the Internet.

The Respondent also alleges that in any determination of likelihood of confusion,

the relevant public for the Complainant is its current and potential advertisers,

but not the viewing public. The Respondent states that these advertisers would

not "mistakenly place an ad on Respondent’s website thinking it to be Complainant’s

TV station or Complainant’s website…" and thus there could not be any possibility

of confusion between the Complainant’s marks and the Respondent’s domain name

and websites.

The Respondent denies that it ever offered to sell the domain names for $30,000,

alleging that the figure was offered in a settlement context and is thus not

properly considered by the Panel.

The Respondent argues that the Complainant should have registered variations

of its marks as domain names if it wanted to secure them for its own use. The

Respondent argues that the Complainant should not be allowed to demand the transfer

of domain names that the Complainant should have registered if it wanted to

enforce its marks.

The Respondent asserts that Wave TV technology is a viable emerging technology

and alludes that the domain names will be used to develop websites in the future

that will involve or showcase this technology. The Respondent alleges that the

Complainant is trying to prevent the Respondent from using any domain name that

uses the term "wave" or "wavy."

The Respondent denies that she is a cybersquatter who registers other parties’

trademarks, asserts that she has developed websites that other third parties

endorse or have otherwise acquiesced to, and has developed hundreds of other

successful websites.

The Respondent otherwise generally denies the Complainant’s allegations.

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).

A. Identity of Respondent’s Domain Name and Complainant’s Trademarks

The Panel concludes that the Complainant has trademark rights in the terms

WAVY, WAVY TV, and WAVY TV 10. The lack of a federal registration does not prevent

the Complainant from establishing common law trademark rights in these terms.

Nor does the failure of the Complainant to use the symbol "TM" prevent

the establishment of trademark rights.

Broadcasting call letters can serve as trademarks, if they are used in a trademark

sense. The Panel finds that the Complainant uses the call letters and the composite

terms in a trademark sense, based on the materials provided by the Complainant,

and material viewed by the Panel at the Complainant’s WWW.WAVY.COM website.

The terms are clearly and consistently used to identify the Complainant, and

high television ratings support the contention that many people associate the

marks with the Complainant. Use of the marks on-air for thirty-two years, supplemented

by significant off-air marketing expenditures in the form of advertising and

website content, has created legal rights in the marks under the common law

that are protectable against infringement, just as are registered rights.

The Panel finds that the WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM

domain names are virtually identical and in the context of the use here, are

confusingly similar to the trademarks in which the Complainant has rights. WAVY

TV is the Complainant’s call letters. WAVY TV 10 is the Complainant’s call letters

and its local station number, which it uses to identify itself, and which no

others are authorized to use. WWW.WAVY.COM is the domain name for the Complainant’s

website. The Complainant has rights in these marks. The addition of a hyphen

does not decrease the confusing similarity between the domain names and these

marks.

Thus, Panel finds for the Complainant on the first element, that Respondent’s

domain name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights.

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Panel 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 disputed domain names.

The Panel finds that the Respondent, while making allegations, has not provided

any persuasive evidence that she was commonly known by the disputed domain names

prior to the dispute, and has not provided any persuasive evidence that she

has otherwise established trademark rights in the terms – no documents, no advertising,

no brochures, no letterhead, no mail to her, no invoices, no purchase orders,

simply no evidence beyond an allegation in gross. Thus, the Respondent can not

claim any trademark rights in the terms that would trump the Complainant’s.

The Panel finds that the Respondent has not provided persuasive evidence that

she made a legitimate noncommercial or fair use of the disputed domain names,

without intent for commercial gain by misleadingly diverting consumers to her

websites. The Panel finds that the Respondent’s uses of the domain names are

for commercial purposes, since she operates a commercial website design business,

and by her own admission attempted to establish a for-profit business relationship

with the Complainant involving the domain names.

The Panel further finds that the Respondent did not make any demonstrable preparations

to use the disputed domain names in connection with a bona fide offering of

goods or services before any notice of the dispute. Domain names made of another

party’s trademarks, with website content at those domain names containing the

party’s trademarks and those of its competitors, used without their authorization,

does not constitute a demonstrable preparation to use the domain names in a

bona fide offering of goods and services. Holding a stable of domain names comprised

of another’s trademarks hostage in an attempt to compel a business relationship

with the trademark owner is not a demonstrable, appropriate and lawful preparation

to use a domain name.

Furthermore, the Panel is unaware of any technology known as "Wave TV"

technology and Respondent has provided no evidence of who if anybody generated

such a technology or used the name "Wave TV" to identify or describe

any such. In context here, the Panel finds the Respondent’s website content

posted at the disputed domain names well after the dispute was underway regarding

alleged "Wave TV" technology to be quite suspect, and not a demonstrable

preparation to provide a bona fide offering of goods and services. The Respondent’s

timing in posting this content well after the Complainant began its strenuous

objections to the domain names and the websites is suspicious, and appears like

a post-hoc attempt to manufacture a legitimate use of the domain names.

Thus, Panel finds for the Complainant on the second element, that Respondent

has no rights or legitimate interests in respect to the domain name.

C. Respondent’s Registration and Use of the Domain Name

The Panel considers the nonexclusive list of factors found in Paragraph 4(b)

of the Policy to determine whether the Respondent registered and used the disputed

domain names in bad faith.

The Panel finds that the Respondent registered and used the disputed domain

names in bad faith. The Panel finds that the Respondent registered and used

the domain names with the intent to attract, for commercial gain, Internet users

to its websites by creating with the Complainant’s marks confusion as to source,

sponsorship, affiliation, or endorsement or her website. In light of all the

evidence of the Respondent’s conduct, the Panel can not discern a legitimate

reason for the registration of these specific domain names, other than to divert

to her own website for her own benefit those online computer users who are seeking

authorized information by or from the Complainant.

The domain names are virtually identical to the Complainant’s marks, and as

such, it is reasonable to assume that online computer users who are looking

for the Complainant’s website would try the Respondent’s domain names in their

search. The Respondent’s websites are identified by the Complainant’s marks

in the domain names, and originally contained the Complainant’s marks in its

content.

Upon encountering the Respondent’s websites that are identified by the Complainant’s

marks in the domain names, many of these users assuredly would assume that the

Complainant had endorsed or sponsored the sites, or was somehow affiliated with

the Respondent and/or all the parties whose marks appear on the sites. The unauthorized

use of the Complainant’s exact marks alongside those of it’s competitors on

the sites constitutes a bad faith use of the domain names. Removal of the Complainant’s

marks from the websites does not show lack of bad faith, because the continued

use of the Complainant’s competitor’s marks at a website identified by the Complainant’s

mark in the domain name is still confusing. Confusion as to source or affiliation

would not be dispelled once the user viewed the content of the site.

Contrary to the Respondent’s arguments, the relevant public is not just the

Complainant's advertisers, but includes all consumers who recognize the marks

as identifying the Complainant. The Complainant’s advertisers are not the only

relevant public since the Complainant uses the marks in a trademark sense and

has done so for years prior to Respondent’s subject use; and arguendo, even

if such was true, the Respondent’s registration and use would still be in bad

faith, as these specific domain names and the content posted on the website

would still be likely to cause confusion as to source, affiliation, or sponsorship

with the Complainant.

The Panel notes that the timing of the Respondent’s registration of the WWW.WAVY-TV.COM

and WWW.WAVY-TV10.COM domain names is evidence of the Respondent’s bad faith.

As noted previously, the Respondent registered these domain names well after

the Complainant strenuously objected to the registration of the other two domain

names, and did not disclose these registrations during its attempts to settle

the matter. Registration of such domain names, almost identical to the first

two domain names and the Complainant’s marks, especially at that stage in the

dispute, could not have been done in good faith, and only served to escalate

the dispute between the parties. These domain names were used in the same manner

as the other domain names, in that the identical objectionable and confusing

content is posted.

The Panel finds the Respondent’s offer to "settle" the dispute for

$30,000 suspicious and not indicative of a good faith registration in light

the context here, such as lack of a plausible reason to select names so close

to Complainant’s marks, the actual registration cost, her steadfast refusal

to consider the transfer of the domain names, and her repeated attempts to enter

into a business relationship with an obviously unwilling trademark owner.

The Respondent’s arguments that the Complainant should have registered every

possible variation of its trademarks if it wanted to enforce its trademark rights

is equally unavailing. A trademark owner is not charged with the duty to register

any of the many possible variations of its trademarks as domain names in order

to prevent cybersquatters from encroaching upon its marks and causing confusion

in the marketplace. Trademark owners can not always anticipate creative infringing

maneuvers by unrelated parties. If the Respondent’s argument was correct, then

large companies with a stable of thousands of marks would have to register an

exponential number of domain names to protect their marks from infringers. Such

a scenario is unworkable and has no basis in trademark law.

Contrary to the Respondent’s reasoning, the mere availability of a domain name

does not mean that the registration of that domain name will not infringe the

trademark rights of others, or cause confusion in the marketplace. The Respondent’s

argument that the Complainant should not be entitled to prevent the use of its

marks in a domain name merely because she "won the race to the registrar"

is unavailing and reeks of a bad faith intent to prevent the Complainant from

using and reflecting their own marks in corresponding domain names.

Regarding the Respondent’s assertions that it registered the marks to preserve

its ability to showcase what it now names "Wave TV technology," the

Panel does not see why the Respondent needs four domain names that are virtually

identical to the Complainant’s marks to do so. If the Respondent originally

registered these specific domain names with the specific intent to highlight

a particular identifiable technology, it seems more logical that it would have

registered "WWW.WAVETV.COM" or something along that line, instead

of names that mimic the Complainant’s call letters and even include the Complainant’s

local television station number. It also seems that if that was the Respondent’s

original intent, it would have posted relevant content regarding this technology

from the beginning; instead, the Respondent posted a website featuring the Complainant’s

trademarks and those of its competitors, with links to their respective websites.

Such conduct does not reflect registration and use in good faith.

The Panel finds that the Respondent registered and used of all four of the

disputed domain names in bad faith. Thus, Panel finds for the Complainant on

the third element.

7. Decision

For the foregoing reasons, the Panel decides:

1. That the WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM domain

names registered by the Respondent are virtually identical and confusingly similar

to the trademarks in which the Complainant has rights;

2. That the Respondent has no rights or legitimate interests with respect to

the WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM domain names; and

3. The Respondent’s WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM

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

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain names WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM,

and WAVY-TV10.COM be transferred to the Complainant.

Tom Arnold

Sole Panelist

Date: June 2, 2000