WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interactive Television Corporation v. N
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 N, located in Fremont, California USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are and .
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 , 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 , , , 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 on February 21, 2000, and on December 21, 1999.
On January 25, 2000, BTI Group, on behalf of Complainant, wrote Respondent seeking to discuss "the possible acquisition" of the 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)( ).
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
Full & Egal Universal Law Academy