WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vidiots Delight, Inc. v. Digitellum, Inc. dba BTG or Broadcast Technologies Group
Case No. D2000-1086
1. The Parties
The Complainant is Vidiots Delight, Inc., a corporation organized in the State of California, United States of America (USA), with a principal place of business at 302 Pico Boulevard, Santa Monica California 90405.
The Respondent BTG or Broadcast Technologies Group, a tradename owned by Digitellum, Inc., which is a corporation organized in the State of Arizona, United States of America (USA), with a principal place of business at 3401 East Thomas Road, Suite H, Phoenix, Arizona 85018.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "VIDIOTS.COM".
The registrar of the disputed domain name is Network Solutions, Inc., with a business address in Herndon, Virginia, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on August 17, 2000, and by courier mail received by WIPO on August 21, 2000.
3.2 On August 31, 2000 all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On September 5, 2000, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent via e-mail (complaint without attachments), facsimile (complaint without attachments), and courier mail (with enclosures).
3.4 On September 26, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, facsimile, and courier mail.
3.5 On September 27, 2000, WIPO received an e-mail communication from counsel for the Respondent explaining the reason for the default and requesting withdrawal of the notice of default. The e-mail indicated that counsel for the Respondent spoke with opposing counsel who did not object to the late submission of the Response, which was apparently due to technical errors.
3.6 On September 27, 2000, WIPO transmitted notification to Respondent of its receipt of the Response to the complaint via e-mail.
3.7 On October 2, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On October 2, 2000, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.8 On October 4, 2000, 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 October 18, 2000. On October 4, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file by courier mail.
3.9 On October 10, 2000, Complainant forwarded a Reply accompanied by the Declaration of Cathy Tauber via e-mail, both of which were forwarded via e-mail to the Panel on October 11, 2000.
The Panel has not received any further 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
4.1 Complainant states that it has used the trademark and company name VIDIOTS in the United States since at least as early as November 24, 1985. The Complainant also states that the VIDIOTS name and mark has been used continuously by it in the State of California since 1985 and in interstate commerce since at least as early as 1992. (Complaint, � 9.)
4.2 Complainant has provided a copy of a CoreSearch database record of what is purported to be evidence of California Trademark Registration No. 81082 issued April 25, 1986 for the mark VIDIOTS. The registration covers "clothing products, including t-shirts." The Complainant states that the "registration originally covered, inter alia, the retail video store and rental services provided by Complainant." According to Complainant, upon renewal of the state registration the record was changed to substitute "clothing products, including t-shirts" for the retail video store and rental services, instead of the intended addition of the new goods. (Complaint, Annex C.)
4.3 Complainant has provided a copy of an application to register the trademark / service mark VIDIOTS with the U.S. Patent and Trademark Office (the "USPTO"), which was filed on July 21, 2000 and given Serial No. 76/094,208. The goods and services listed for the application are "Retail store services and mail order services featuring books, postcards and prerecorded video cassettes and DVDs; Rental of video cassettes and DVDs featuring motion pictures; Providing research service for others relating to motion pictures," in International Class 035. The application claims first use of the mark anywhere as of November 1985 and first use of the mark in interstate commerce as of September 1993. (Complaint, Annex D.)
4.4 The validity of Complainant's state trademark registration for VIDIOTS has not been contested by Respondent. Other than the inconsistency in Complainant's claimed dates of first use in interstate commerce (September 1993 in the federal trademark application and at least as early as 1992 in paragraph 9 of the Complaint), Complainant's use of the mark VIDIOTS has not been contested by Respondent. The Panel accepts as undisputed that the Complainant is the holder of a valid state trademark registration for the mark VIDIOTS.
4.5 The Panel has observed from the Trademark Electronic Search System (TESS) of the USPTO that Complainant previously filed and abandoned a federal service mark application for the mark VIDIOTS. The application was filed on March 23, 1990 and was abandoned on February 19, 1991 for failure to respond to a non-final action from the USPTO. The abandoned application claimed a date of first use of the mark anywhere as August 25, 1985 and first use in interstate commerce as November 1986. Although the dates of use are again inconsistent with the dates of use in the complaint and the currently pending federal trademark application, the Panel considers the abandoned application as further evidence of Complainants common law rights in the VIDIOTS mark.
4.6 Complainant states that it has advertised in Movieline magazine since 1994. Complainant provided a copy of its advertisement from the August 2000 issue of Movieline magazine showing use of the mark. (Complaint, Annex E.)
4.7 Complainant has provided printouts from the Respondent's web site located at , various correspondence between the parties, and correspondence with the State Bar of Arizona. (Complaint, Annexes F - J.)
4.8 Respondent states that from a date no later than 1982, using the names "Broadcast Technologies Group" and "Vidiots," Michael Werner and others engaged in various consulting engineering projects involving the design, or collaboration in the design, of software packages for graphical and animation display on television, and on computer monitors. Mr. Werner and the others involved in the various projects operated as an unincorporated entity. Respondent states that the name "Broadcast Technologies Group" was used in connection with scientific, government and military work done by himself and others and that the name "Vidiots" was used in connection with work done for television and communications industry projects. (Response, Part Two, Section B(1).)
4.9 Respondent states that beginning no later than in the early Autumn of 1984, the "Vidiots" group began to develop a 5-channel data subcarrier broadcasting system as consulting engineers retained by McMartin Industries, Inc. and McMartin Broadcasting. Respondent states that the 5-channel data subcarrier broadcasting system was displayed in a booth in Las Vegas, Nevada at the 1985 National Association of Broadcasters convention. Respondent further alleges that Broadcast Technologies Group used the name "Vidiots" to identify the engineering team that developed the system and had specially printed business cards and graphic art work made in connection with the display. (Response, Part Two, Section B(2).)
4.10 Respondent states that in 1989 Michael Werner began a consulting project with Interactive Media Technologies, Inc., located in Scottsdale, Arizona at the request of John North, who had been one of the participants in the McMartin Industries, Inc. project. Respondent states that the Interactive Media Technologies project was undertaken using the name "Vidiots" and the name "Broadcast Technologies Group" or "BTG." (Response, Part Two, Section B(3).)
4.11 Respondent states that in July 1993 Mr. Werner and James Penny, who did business as "Wolf Enterprises" began a consulting project for Sirius Publishing Co. and its then owner Richard Ganant. Respondent states that this project was undertaken using the name "Vidiots" as a tradename initially of "Broadcast Technologies Group" or "BTG" and subsequently of "Wolf Enterprises/BTG." (Response, Part Two, Section B(4).)
4.12 Respondent states that beginning in 1996, Mssrs. Werner and Penny, doing business as Wolf Enterprises/BTG, began a project under the name "Vidiots" for Paralign Staffing, a subsidiary of Americare. According to Respondent, in connection with this project, an artistic rendering of a man's face and keyboard, depicting the motion of the man's hand and extending finger to the keyboard, striking a key, was prepared. The name "Vidiots" appeared at the bottom of and as a part of the drawing. The drawing was allegedly developed and used for several purposes, including placement on the cover of user manuals and other print materials related to the pilot project software and on t-shirts. A copy of the computer graphic artistic rendering was provided by the Respondent. (Response, Part Two, Section B(5) and Appendix I to Response.)
4.13 Respondent states that in 1996 Mr. Werner applied for, and in 1997 obtained, registration of the domain name "" for use in the business it then was conducting actively, using that name and mark. (Response, Section B(5).) According to the WHOIS Search Results for the domain name "" the domain name record was created on January 3, 1997. (Complaint, Annex A.)
4.14 According to Respondent, Digitellum, Inc. is the present owner of all rights which Michael Werner and James Penny may have in the name "Vidiots." (Response, Part Two, Section B(6).)
4.15 Respondent states that Digitellum intends to continue its efforts in the television and animation development businesses and expects to establish a web site using the domain name "" in connection with that effort. (Response, Part Two, Section B(7).)
4.16 Respondent has not used the domain name "" to establish a web site. Respondent states that its plan to create a web site has not been implemented due to demands of its other software application projects, which are not related to the kinds of business for which the "Vidiots" logo and mark would be most appropriate. (Response, Part Two, Section B(8).)
4.17 The Respondent submitted affidavits from Michael Werner and James Penny in support of its factual allegations.
4.18 In its Reply, the Complainant submitted a declaration from Cathy Tauber in reply to Respondent's Response. The declaration included a number of published articles and advertisements showing use of the name "Vidiots" as early as November 1985.
5. Parties� Contentions
A. Complaint
Complainant states:
"9. Complainant has used the trademark and company name VIDIOTS ("Complainant�s Mark") in the United States since at least as early as November 24, 1985. Complainant�s Mark has been continuously used by Complainant in the state of California since 1985 and in interstate commerce since at least as early as 1992."
"10. Complainant is the sole and exclusive owner of common-law rights in and to the trademark VIDIOTS, and is the owner of California State Registration No. 81082, issued April 25, 1986."
"17. Without authorization from Complainant, on January 3, 1997, Respondent (through its predecessor � see discussion below in paragraph 18) registered the domain name with NSI."
"18. In the summer of 1999, Complainant wished to seek registration for the domain name . It checked R and found that the domain was taken by a company it recalls had the name Wolfe Video (or a similar name), and the Administrative Contact was identified as Michael Werner. At that time, Ms. Cathy Tauber, a representative of Complainant, called Mr. Werner and left a message. Mr. Werner returned her call. Ms. Tauber advised Mr. Werner that she was interested in obtaining the domain name . Mr. Werner advised her that Comedy Central and/or others had expressed an interest in purchasing the domain name and that he would not sell it for a small fee. Mr. Werner did not advise Complainant that "Vidiots" was in any way being used by his company, but only that others expressed an interest in purchasing the domain name."
"19. In early May 2000, Complainant wished to pursue acquiring the rights to the domain name . At that time, Patricia Polinger called the telephone number listed on R�s record for . A woman whose greeting included the company name Digitellum answered the telephone. She indicated that Mr. Werner did not have time to speak with Ms. Polinger, but that she would have their corporate counsel, Randy Lang, return the call. On May 8, 2000, Mr. Lang spoke with both Ms. Tauber and Ms. Polinger, and indicated that they would have to make an offer for the domain name. Complainant offered Mr. Lang USD $1,000. Mr. Lang advised Ms. Tauber and Ms. Polinger that he would get back to them."
"20. In response to the May 8 telephone call, Complainant received a letter from Mr. Lang, also dated May 8, 2000, in which he rejected the USD $1,000 offer, advised that the Respondent would not accept less than USD $500,000, and requested that Complainant "cease and desist our Trade Name." No evidence of use of "Vidiots" as a trademark or a trade name was alleged in or enclosed with this letter."
"25. The domain name , used and registered by Respondent, is identical to Complainant�s Mark. Complainant�s Mark has long been used, is both famous and distinctive, and was both famous and distinctive at the time Respondent registered ."
"26. Respondent has no rights or legitimate interests with respect to . The domain name bears no relationship to the actual or intended business of Respondent or its Administrative Contact."
"27. Respondent has not used the domain name in connection with any bona fide offering of goods or services, has not been commonly known by the domain name, and has not made any legitimate noncommercial or fair use of the domain name."
"28. Respondent�s rejection of Complainant�s offer of USD $1000 for purchase of the domain name and indication that it would not accept less than USD $500,000, along with its allegation of interest by several third parties in acquiring the domain name, evidences that Respondent has registered the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the domain name. As such, his activities correspond to those listed in paragraph 4(b)(i) of the Policy as evidence of bad faith registration and use of a domain name."
"29. By using the domain name , Respondent intentionally attempts to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location. As such, his activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name."
"30. Further evidence of Respondent�s bad faith includes Respondent�s "cease and desist" letter to Complainant dated May 8, 2000, as Respondent does not own any rights in and to the trademark or the trade name "Vidiots."
B. Response
Respondent states:
"Respondent admits that its domain name is identical to or confusingly similar to a trademark or service mark in which Complainant claims to have rights, but disputes that such rights actually exist. Respondent's dispute is based on Respondent's first use of the name "Vidiots" in commerce subject to regulation by the United States during 1982, well before Complainant's alleged intrastate (California) registration of the name and long before September 1993, when Complainant alleges it first used its name in commerce subject to regulation by the United States."
"Respondent asserts rights in the name "Vidiots" as a name actually used by Respondent's predecessor in commerce subject to regulation by the United States beginning no later than in 1982, four years prior to the first claimed intrastate use of the name by Complainant. Respondent continued to use the name in such commerce through the date of his registration of the domain name "."
"Respondent was actively using the name and a registrable mark incorporating the name "vidiots" at the time it registered the domain name "" and its evidence includes a copy of its registrable mark incorporating the name."
"Bad faith registration cannot have existed, since Respondent has established that it was engaged in a bona fide business using the name "vidiots" actively in commerce in the United States at the time the domain name "" was registered."
"Respondent believes that, in view of its many years of use of the name "Vidiots," going back to 1982, and the symbiotic relevance of the name to that part of its engineering consulting business related to television and graphics, Respondent was and is unwilling to sell its domain name for $1,000 or any sum less than a substantial sum properly reflective of its value to Respondent and its established engineering consulting business. Respondent further alleges that it has a legal right to refrain from selling the name "Vidiots" or the domain name "" to any person, including Complainant and to continue to use the name in connection with its business, present and future."
"This proceeding represents an attempt by Complainant to pirate from Respondent its right to use as its domain name a name which Respondent and its predecessors have used over a period of nearly 20 years in connection with its business all or most of which has involved commerce which is subject to regulation by the United States. As such it is an act of Reverse Domain Name Hijacking, as defined in paragraph 1 of the Rules."
C. Reply
Complainant states:
"In this case, Complainant relies on its unregistered trademark and trade name in which it has established rights since at least as early as 1985. Attached hereto is a Declaration of Cathy Tauber, Vice President and Treasurer of Complainant, including Exhibits that evidence such use. This evidence was not submitted with the Complaint, as Complainant did not believe it would be necessary at that time."
"Moreover, Respondent raises issues concerning its alleged rights in and to the name "Vidiots". Respondent alleges that it used the name until about the time it registered the domain name , but that such use has ceased. Respondent further alleges that its plans to establish a web site have not been implemented to due the demands of its other software application projects. These statements do not show a legitimate right to the domain name, but do evidence abandonment of any rights in and to the name that Respondent may have had."
"Respondent claims the domain name was not registered and used in bad faith. Complainant disagrees. Complainant notes that the list of "bad faith" circumstances of registration and use in paragraph 4(b) of the Policy is illustrative and not exhaustive. According to Network Solutions, Inc.�s WHOIS database, the Respondent in this administrative proceeding is BTG, not Digitellum, Inc. First, BTG is not a legal entity, nor is it a registered name under which any of the related parties hereto is doing business."
"Complainant asserts that Respondent�s provision of false contact information and its continued refusal to accept mail from Complainant and its attorneys constitutes further evidence of Respondent�s "bad faith."
"While Complainant acknowledges that Respondent was initially under no duty to show use of the mark, one would believe that if Respondent had any such rights, it would have offered at least some explanation to Complainant, particularly within its cease and desist letter."
"Lastly, Respondent�s claim that "the filing of a trademark application by Complainant immediately before the bringing of this proceeding and without attempting any inquiry into the bona fide basis for Respondent�s use of the name and registration of the domain name was an act of Reverse Domain Name Hijacking" is without merit."
6. Discussion and Findings
6.1 Before reaching the merits, the Panel must decide whether to consider Complainants� Reply. Under the Rules, this determination is solely within the discretion of the Panel. Rule 10(a), 10(d), and 12. As the Respondent has not objected to the Complainants' submission of a Reply and because it was received before the Panel began any substantive review of this matter, it is appropriate to consider the Reply.
6.2 The Uniform Domain Name Dispute Resolution Policy (the "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.
6.3 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
6.4 In this proceeding, Respondent has furnished a detailed Response to the Complaint. There is no issue as to whether Respondent received adequate notice of these proceedings.
6.5 Paragraph 4(a) of the Policy sets forth 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 of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 Complainant asserts that the domain name "" is identical to Complainant's trademark. (Complaint, � 25.)
6.7 Respondent admits that its domain name is identical to or confusingly similar to the trademark and/or service mark VIDIOTS, which the Complainant claims to have rights. (Response, Part Two, Section A(i).)
6.8 Based upon the Complainant's exhibits showing use of the name VIDIOTS, its California trademark registration, and its pending and abandoned federal trademark / service mark applications, the Panel finds that the Complainant has established that it has rights in the mark VIDIOTS.
6.9. As the domain name "" is identical to the Complainant's mark VIDIOTS, the Panel finds that the Complainant has satisfied its burden of proof as to paragraph 4(a)(i) of the Policy.
6.10 The Respondent asserts that it has rights in the name "Vidiots" as a name actually used by Respondent's predecessor in interstate commerce no later than 1982 and that Respondent continued to use the name through the date of registration of the domain name "." (Response, Part Two, Section A(ii).)
6.11 Based upon the affidavits of Michael Werner and James Penny, the Panel finds that the Respondent and its predecessor had used the name "Vidiots" in connection with a bona fide offering of goods or services before any notice of this dispute from the Complainant. (Policy, � 4(c)(i).)
6.12 The Complainant argues that "Respondent has submitted not one piece of concrete evidence showing any use of "Vidiots" as a name or trademark, but has merely made self-serving statements in the Declarations of Mr. Michael Werner, the Chief Engineer at Digitellum, Inc., and Mr. James Penny, a previous associate of Mr. Werner who has no relation to this proceeding, and thus, has no knowledge of such use by Respondent." (Complainant's Reply, Page 1.)
6.13 While evidence in addition to the sworn affidavits of Mssrs. Werner and Penny would have been helpful, the Panel finds the affidavits credible and that the Complainant has failed to provide any evidence that contradicts the witnesses' statements. The Policy clearly states that the complainant has the burden of demonstrating that the Respondent has no rights or legitimate interests in respect of the domain name. (Policy, � 4(a)(ii).)
6.14 As the Respondent has rights or legitimate interests in respect of the domain name "," the Panel finds that the Complainant has failed to satisfy its burden of proof as to paragraph 4(a)(ii) of the Policy.
6.15 The Panel notes that a finding of legitimate right under paragraph 4(c) of the Policy means only that the streamlined dispute resolution procedure is not available. Only cases of abusive registrations are intended to be subject to the streamlined dispute resolution procedure. (See "Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy," dated October 25, 1999.)
6.16 Complainant asserts that the Respondent registered and uses the domain name "" in bad faith based upon the following:
(a) Respondent's rejection of Complainant's offer of USD $1000 for purchase of the domain name and Respondent's indication that it would not accept less than USD $500,000;
(b) Respondent's indication that several third parties, including Comedy Central, were interested in acquiring the domain name and that Respondent would not sell the domain name for a small fee;
(c) Respondent's use of the domain name "" is an intentional attempt to attract, for commercial gain, Internet users to Respondent's web site or other on-line location; and
(d) Respondent's letter dated May 8, 2000 demanding that Complainant cease and desist from any further use of the name "Vidiots."
6.17 Complainant has provided no evidence of bad faith by the Respondent at the time it registered the domain name "." The Respondent registered the domain name on January 3, 1997. (Complaint, Annex A.) The Complainant did not discover the registered domain name until the summer of 1999, when it decided it wished to seek registration of the domain name. (Complaint, � 18.) The first contact between the parties was initiated by the Complainant (Complaint, � 18) and there is no evidence that either party was aware of the other prior to that time.
6.18 Complainant has also failed to provide any evidence of bad faith by Respondent in its use of the domain name. Complainant alleges that the Respondent is using the domain name to intentionally attract other to its web site (Complaint, � 29) while simultaneously stating that "based upon the online investigations, Complainant believes that Respondent has made no bona fide use of "Vidiots" as a trademark, a trade name or a domain name to point to any Web site." (Complaint, � 22.)
6.19 The Panel finds that the Complainant has failed to establish that the Respondent's domain name "" has been registered and is being used in bad faith. Therefore, the Panel finds that the Complainant has failed to satisfy its burden of proof as to paragraph 4(a)(iii) of the Policy.
6.20 Respondent alleges that in bringing this proceeding the Complainant is using the Policy in bad faith to attempt to deprive the Respondent of the domain name "." In other words, the Respondent accuses the Complainant of reverse domain name hijacking, as defined in paragraph 1 of the Rules.
6.21 The Panel has carefully weighed the evidence presented and determines that the Complainant has not engaged in reverse domain name hijacking in bringing this proceeding.
7. Decision
As the Complainant, Vidiots Delight, Inc., has not proven that the Respondent, Digitellum, Inc. dba BTG or Broadcast Technologies Group, has no rights or legitimate interests in respect of the domain name "" (Policy, � 4(a)(ii)) or that the Respondent registered and is using the domain name "" in bad faith (Policy, � 4(a)(iii)), the Complainant's request for transfer to it of the domain name "" is denied.
R. Eric Gaum
Sole Panelist
Dated: October 18, 2000
Full & Egal Universal Law Academy