Administrative panel decision




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION
Don Cornelius Productions, Inc. v. Fred Fluker d/b/a Futurevision
Case No. DTV2001-0026


1. The Parties
The Complainant is: Don Cornelius Productions, Inc., a company with offices at 9255 W. Sunset Blvd., Suite 420, West Hollywood, California 90069, U.S.A. The Complainant is represented by Brendan R. Appel, Esq., Katten Muchin Zavis, 525 West Monroe Street, Suite 1600, Chicago, Illinois 60661-3693, U.S.A.
The Respondent is: Fred Fluker, d/b/a Futurevision, with mailing address at P.O. Box 792, Rosemead, California 91770, U.S.A.

2. The Domain Name and Registrar
The domain name in dispute is .
The Registrar is: The .tv Corporation International, 100 Glendon Avenue, 8th Floor, Los Angeles, California 90024, U.S.A.

3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on October 23, 2001 (hard copy). On October 25, 2001, the Center requested that the Registrar .tv Corporation International check and report back on the registrant for the domain name . On October 29, 2001, .tv Corporation International reported to the Center that the registrant was the Respondent in this proceeding and that the registration was subject to the Policy.
On October 31, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a Response within the 20 day time frame prescribed by the Rules (paragraph 5a), and on November 21, 2001, was declared in default. In accordance with paragraph 5e of the Rules, the Panel will decide this case based on the Complaint.
The Administrative Panel submitted a Declaration of Impartiality and Independence on November 25, 2001, and the Center proceeded to appoint the Panel on November 26, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by December 10, 2001.

4. Factual Background
On August 17, 1970, the Complainant began using its "soultrain" mark to produce a televised musical variety program. For the past 14 years the Complainant also has produced the Soul Train Music Awards. Complainant registered the service mark Soul Train in the U.S. on July 18, 1972 (No. 938,310); Complainant also has registered the mark in Japan (Reg. No. 4351855) (Annex D).
On July 1, 2000, Respondent registered the disputed domain name, (Annex B). The Complainant sent the Respondent a "demand" letter on January 4, 2001, and on October 5, 2001 (Annex G). The Respondent did not answer the Complainant's letters, and the Complainant now seeks transfer of the disputed domain name in this proceeding.

5. The Parties' Contentions:
Complainant's Summarized Contentions:
- Since August 17, 1970, and continuing through today, Complainant has produced a nationally syndicated, televised musical variety program using the Soul Train mark.
- For the past 14 years, Complainant has also produced the well-known Soul Train Music Awards. Complainant has spent substantial sums of money promoting its Soul Train mark in the United States, Europe and Japan.
- Complainant has continuously used the service mark Soul Train since August 17, 1970, in conjunction with its Soul Train service mark registration in the U.S. dated July 18, 1972 (No. 938, 310). The mark is valid and subsisting and has now become incontestable pursuant to 15 U.S.C. Sect. 1065 and 1115 (b) (Annex D).
- Complainant also owns a trademark registration for Soul Train in Japan (Reg. No. 4351855) and has pending trademark applications in the United Kingdom (App. No. 2205267 Soul Train) and with the European Community (App. No. 1951003 Soul Train).
- Complainant maintains its own official website at (domain name registered December 22, 1999) and (domain name registered March 17, 1998) (Complaint Annex E).
- As a result of Complainant's long and extensive use and promotion of the Soul Train mark in interstate commerce, the mark has acquired a distinctiveness and secondary meaning signifying Complainant. Complainant has now built up and owns valuable goodwill which is symbolized by the Soul Train mark.
- Respondent has made no use of the domain name. Entering the domain name into a web browser reverts to a .tv Corporation page which notifies a user that has already been registered.
- By virtue of Complainant's federal service mark registration, Respondent was put on constructive notice of Complainant's rights to the Soul Train mark prior to registering the domain name. Respondent's registration of Complainant's famous Soul Train mark in the ".tv" domain name therefore constitutes bad faith.
- In addition, prior to Complainant instituting this administrative proceeding, Respondent had been placed on actual notice of Complainant's rights by virtue of two demand letters sent by Complainant's counsel to Respondent on January 4, 2001, and on October 5, 2001. Respondent has never responded to either letter (Annex G).
- Respondent's domain name is legally identical to Complainant's Soul Train mark. Complainant's entire mark is contained in the domain name, and the only difference between the mark and the name is the insignificant top-level domain indicator ".tv". (Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053).
- Respondent has no rights or legitimate interests in the domain name. At no time before or after he registered the domain name has Respondent ever had any legitimate business relating to or incorporating the term Soul Train, nor has Complainant ever granted Respondent a license or other permission to use the Soul Train mark. Respondent has not been referred to or commonly known by the term Soul Train. Respondent owns no state or federal trademark registration for the Soul Train mark and, as of the date this Complaint was filed, has not applied for any such registration.
- Respondent has registered the domain name in bad faith because Respondent: 1. Had actual or at least constructive notice of Complainant's Soul Train mark at the time he registered the domain name; 2. Registered a famous television show's name as a ".tv" domain name; 3. Has made no use of the domain name; and 4. Has taken steps to hide his identity and hinder communication with him.
- Constructive notice of another's trademark has been found by prior Panels to be evidence of bad faith registration (Chernow Communications, Inc. v Jonathan D. Kimball, WIPO Case No. D2000-0119; and Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055: "Complainant's trademarks are widely well-known and have a strong reputation."; Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163,"Respondent's bad faith registration is also shown by the fact that he chose a famous television show's name to register as a “.TV” address.")
- Respondent's bad faith registration is further shown by the lack of any active website at and the fact that Respondent did not make any legitimate non-infringing use of the disputed domain name. The failure to establish an active website using the disputed domain name is evidence of bad faith (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). Instead, the domain name merely corresponds to a page established by the .tv Corporation that informs the user the domain name has been registered.
- Finally, Respondent has taken several steps to hide himself from anyone seeking to question his registration of the disputed domain name. Where a Respondent has taken these type of steps to conceal his identity or hinder communication, prior Panels have inferred bad faith registration and use.
- The disputed domain name should be transferred to the Complainant.

6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, paragraph 4(a)(i iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided a copy of a printout from the database of the United States Patent and Trademark Office Principal Register showing Complainant registered the service mark "Soul Train" on July 18, 1972, registration no. 0938310, in international class no. 41 for entertainment services on television (Annex D). The disputed domain name, , is identical to the Complainant's service mark Soul Train, for it is now well-settled under the Policy that internet level indicators such as "tv" do not affect the similarity or identicality between a mark and a disputed domain name (Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053).
Legitimate Rights or Interests
The Complainant contends it has not licensed the Respondent to use its service mark.. The Complainant also contends the Respondent has no other legitimate right or interest in the disputed domain name. The Respondent is in default in this proceeding and thus has not attempted to come forward and show any legitimate rights or interests in the disputed domain name per the Policy at 4c(i-iii). No use whatever on the part of the Respondent is apparent from the record.
The Panel finds the Respondent does not have legitimate rights or interests in the disputed domain name.

Registered and Used in Bad Faith
The Complainant contends the Respondent registered the disputed domain name in bad faith on a number of grounds under the Policy per 4b(i-iv). Notably, the Complainant contends the Respondent registered the disputed domain name in order to prevent the Complainant from registering it. The Panel does not see from the record that this is true.
The Complainant also contends that its Soul Train mark is so famous that Respondent's very act of registering the disputed domain name can only have been in bad faith. The Panel does not believe the Complainant's mark has the unquestionable international fame of a mark such as Veuve Clicquot (Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163). It does however appear that Soul Train is a strong mark within the United States.
The Respondent seems to have done nothing with the domain name since registering it, and its registration motive is as a result quite nebulous. However, the Panel is persuaded by the many Policy decisions of previous Panels who have found that passively holding a well-known trademark as a domain name can amount to registration and use in bad faith. How much nonuse time constitutes bad faith depends on the circumstances.
In this case, the Respondent registered the disputed domain name, , on July 1, 2000, and has done nothing with it since. The Panel finds this almost one and one-half years of nonuse readily qualifies as bad faith registration and use under the Policy. It is hard to imagine a domain name use that would not be functioning or in some advanced state of preparation after the passage of this much time (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830). Paragraph 15 of the Rules allows the Panel to base its decisions on sources other than the Policy and the Rules where the Panel finds this appropriate. In this case, the Panel is persuaded by the cited previous decisions regarding the passive holding of domain names.

7. Decision
The Panel has found the disputed domain name is identical to the Complainant's service mark, Soul Train. The Respondent, in default in this proceeding, apparently has no legitimate rights or interests in the disputed domain name. Finally, the Respondent is found to have registered and used the domain name in bad faith since the Respondent has made no use of it since registering the domain name almost one and one-half years ago.
Pursuant to ICANN Policy paragraph 4(i) and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred from the Respondent, Fred Fluker d/b/a Futurevision, to the Complainant, Don Cornelius Productions, Inc.

_____________________________



Dennis A. Foster
Sole Panelist
Dated: December 7, 2001

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