WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
COMSAT
Corporation v. TELE Satellite
Case No. DTV2001-0011
1. The Parties
The Complainant:
COMSAT Corporation, 6560
Rock Spring Drive, Bethesda, MD 20817, United States of America.
The Respondent:
TELE Satellite, Prinzregentenstr.
128 Munich, Bavaria 81677, Germany.
2. The Domain Name and
Registrar
The domain name in issue
is <comsat.tv> (hereafter "the domain name").
The domain name was registered
with dotTV Corporation, 130 West Union Street, Pasadena, California 91103, USA.
The domain name was registered
on or about July 10, 2000.
3. Procedural History
(1) The Complaint in Case
No. DTV2001-0011 was filed in email form on April 12, 2001, and in
hardcopy on April 18, 2001.
(2) The WIPO Arbitration
and Mediation Center has found that:
- The Complaint was filed
in accordance with the requirements of the Rules and Supplemental Rules for
the Uniform Domain Name Dispute Resolution Policy;
- Payment for filing was
properly made;
- The Complaint complies
with the formal requirements;
- The Complaint was properly
notified in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint
was not filed;
- The Respondent was appropriately
served with a Notice of Default; and that
- The Administrative Panel
was properly constituted.
As Panelist, I accept these
findings.
(3) As Panelist, I submitted
a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither
further submissions nor communications from the Complainant and Respondent,
or their representatives, after the appointment of the Panel.
(5) The date scheduled
for issuance of a decision is: June 6, 2001.
(6) No extensions have
been granted or orders issued in advance of this decision.
(7) The language of the
proceedings is English.
4. Factual Background
A. The Complainant and
its marks
Complainant was created
by the United States Congress pursuant to a 1962 statute to design, develop
and implement a worldwide satellite telecommunications system, with the intention
that every country in the world have access to satellite communications capabilities.
The Complainant is known worldwide as one of the principal initial developers
of the entire field of satellite communications technology and as a major continuing
participant in that field.
Since beginning operations
in 1963, as the Communications Satellite Corporation, Complainant has been universally
known and referred to as "COMSAT." The Complainant has been using
COMSAT as a trademark, service mark and trade name since at least as early as
1964. The Complainant’s COMSAT mark and name is used extensively worldwide,
including the United States and Canada, in advertising, promotional materials,
informational literature, signs, on publications and on goods and equipment
relating to communications services in the communications and related fields.
The Complainant is the registered proprietor of a number of United States trademarks
and service marks, all for the mark "COMSAT" or "COMSAT"
with a device; including No. 828,366; No. 840,195; No. 1,200,243; No. 1,666,705;
No. 1,964,981; 1,974,971. The Complainant is the proprietor of numerous marks
throughout the world. (Hereafter all of the registrations will be referred to
as "the Complainant’s marks" or "the COMSAT marks").
The Complainant has been
diligent in protecting its mark over the years, and has successfully pursued
all infringers. There are no third party trademark registrations for COMSAT
in the United States or, on information and belief of the Complainant, outside
the United States.
B. The Respondent
According to the Whois
database of the concerned registrar, dotTV, the Respondent in this administrative
proceeding is "TELE Satellite", of the address given above. No Response
was filed and so no further information is known about the Respondent.
C. The Domain Name
The <comsat.tv >
domain name resolves to a site at <sat-news.com>, which offers commercial
services including news services in connection with the names "TELE-Satellite"
and "Sat News".
5. Parties’ Contentions
A. The Complainant’s
assertions
The Respondent's domain
name is identical or confusingly similar to the Complainant’s mark.
The Respondent has no legitimate
interest or rights in the domain names based on Complainant’s continuous, long
and exclusive prior use and registration of its mark COMSAT in the United States,
Europe and the rest of the world.
The Respondent registered
the domain name and is using it in bad faith. The Complainant specifically asserts
that:
1. At the time the Respondent
registered <comsat.tv>, it was on constructive notice of the Complainant’s
ownership of the COMSAT trademark and service mark and registrations. The web
site to which <comsat.tv> resolves offers "Professional Satellite
News and Information" to "satellite professionals and satellite enthusiasts."
Given the fame of the COMSAT marks in the satellite field, it is inconceivable
the Respondent was unaware of the Complainant’s COMSAT marks and name, at the
time the Respondent registered <comsat.tv>.
2. The Respondent is not
using <comsat.tv> as a domain name for a site at that address. Rather,
typing in <comsat.tv> resolves to a site at <sat-news.com>, where
satellite news is offered in connection with the names TELE-Satellite and Sat
News. Respondent is thus using <comsat.tv> solely to lure those who are
looking for Complainant to its site when a person types in Complainant’s mark
and name. This use is in bad faith, and it is an attempt to trade off the enormous
goodwill and fame attendant the COMSAT mark in the satellite field.
Accordingly the Panel should
order that the domain name be transferred to the Complainant.
B. The Respondent’s
assertions
The Respondent has not
filed a Response.
6. Discussion and Findings
Paragraph 4a of the UDRP
requires the Complainant to make out three elements:
A. The Complainant has
rights in a trade or service mark, with which Respondent’s domain name is identical
or confusingly similar (Paragraph 4a(i)); and
B. The Respondent has no
rights or legitimate interests in respect of the domain name (Paragraph 4a(ii));
and
C. The Respondent registered
and is using the domain name in bad faith (Paragraph 4a(iii)).
A. The Complainant has
rights in a trade or service mark, with which Respondent’s domain name is identical
or confusingly similar
There are two requirements
that a Complainant must establish under this paragraph; that it has rights in
a trade or service mark, and that the domain name is identical or confusingly
similar to the marks.
The Complainant has provided
the registration documents for its COMSAT marks, in multiple classes within
the US and internationally. I conclude that the Complainant – as registered
proprietor of the COMSAT marks – has established the first requirement of this
paragraph.
The second requirement
is that the domain name be identical or confusingly similar to the marks, and
here the Complainant makes this bare assertion with no further argument. It
is clear on its face that the domain name is identical to the COMSAT marks.
Hence the second requirement of this paragraph is made out.
The Complainant has shown
that it has rights in trademarks, and that the domain name is identical to these
marks. I conclude therefore that the Complainant has satisfied the requirements
of paragraph 4a(i) of the UDRP.
B. The Respondent has
no rights or legitimate interest in respect of the domain name
The Complainant asserts
that the Respondent has no rights or legitimate interest in the domain name,
as required under paragraph 4a(ii) of the UDRP. It makes no further assertions.
Though the Complainant
bears the burden of proof in all matters under the UDRP, the practical effect
of this paragraph is that once the Complainant makes a substantiated allegation
the Respondent bears some responsibility to establish its interests. Of course
here there has been no Response.
This however does not resolve
the issue. In the absence of a Response, I consider it necessary to analyze
whether any of the defenses provided in Paragraph 4c might apply. Paragraph
4c of the UDRP provides the following examples to the Respondent:
"(i) before any notice
to you of the dispute, your use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making a
legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue."
There is no evidence that
any of the scenarios of Paragraph 4c apply here. In fact, two pieces of evidence
specifically negative any assumption of legitimate use by the Respondent. First
is the long-term use, fame, and significance of the COMSAT marks. It is essentially
impossible to believe that, in the absence of specific, compelling evidence
from the Respondent, that it could be legitimately using the domain name. Second,
the domain name resolves to a commercial site located at <sat-news.com>
which offers "Professional Satellite News and Information" to "satellite
professionals and satellite enthusiasts." Clearly the Respondent is seeking
to gain advertising or other revenues from the domain name. These pieces of
evidence, together with the absence of other evidence in the Respondent’s favor,
removes any need to consider more closely whether the Respondent has satisfied
the Paragraph 4c requirements.
As a result I conclude
that, even having considered the possible application of Paragraph 4c, the Respondent
has no rights or legitimate interest in the domain name. I conclude that the
Complainant has satisfied the requirements of paragraph 4a(ii) of the UDRP.
C. The Respondent registered
and is using the domain name in bad faith
The final issue is that
of bad faith registration and use by the Respondent. For paragraph 4a(iii) to
apply, the Complainant must demonstrate the conjunctive requirements that the
Respondent registered the domain name in bad faith and continues to use it in
bad faith.
Paragraph 4b of the UDRP
provides exemplary scenarios which will be sufficient to establish the requirements
of Paragraph 4a(iii). Pursuant to paragraph 4b(iv) where the Respondent has
used the domain name in an attempt "to attract, for commercial gain, Internet
users to [the Respondent’s] web site or other on-line location, by creating
a likelihood of confusion of the complainant’s mark as to the source, sponsorship,
affiliation or endorsement of [Respondent’s] web site or location", bad
faith will be established. As explained in the previous section, this has occurred
here. The Respondent has set up a site for satellite news which clearly exploits
the Complainant’s trademark. This activity falls clearly into the exemplar of
Paragraph 4b(iv), and no further analysis is necessary.
I therefore conclude that
the Complainant has satisfied paragraph 4a(iii) of the UDRP.
7. Decision
The Complainant has made
out all of the elements of paragraph 4a of the Uniform Domain Name Dispute Resolution
Policy.
Pursuant to Paragraph 4i
of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules
for the Uniform Domain Name Dispute Resolution Policy, the requested remedy
is granted.
I hereby order that the
domain name <comsat.tv> be transferred forthwith to the Complainant.
Dan Hunter
Sole Panelist
Dated: June 7, 2001