cablecast.net

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tightrope Media Systems Corporation v. DomainCollection.com

Case No. D2006-0446

1. The Parties

The Complainant is Tightrope Media Systems Corporation (“Complainant”), represented by Traverse Legal, PLC, Traverse City, Michigan, United States of America.

The Respondent is DomainCollection.com, Vancouver, Washington, United States of America (“Respondent”).

2. The Domain Name and Registrar

The disputed domain name is <cablecast.net> (the “Domain Name”). The registrar is DSTR Acquisition VII, LLC d/b/a DotRegistrar.com, Vancouver, Washington, United States of America (the “Registrar”).

3. Procedural History

Complainant filed its initial Complaint with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 9, 2006.

On April 18, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.

In response to a notification by the Center on April 20, 2006 that the Complaint was administratively deficient, the Complainant filed a corrected Complaint (“Complaint”), which was received by the Center by e-mail on April 24, 2006, and in hardcopy on April 26, 2006. The Center verified that the Complaint satisfied the formal requirements of the 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 Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 27, 2006.¹ In accordance with the Rules, paragraph 5(a), the Center set a deadline of May 17, 2006 by which Respondent could file a Response to the Complaint. Respondent did not submit any Response. Accordingly, the Center notified the parties of Respondent’s default by e-mail on May 18, 2006.

The Center appointed David H. Bernstein as the sole panelist in this matter on May 19, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Since 2001, Complainant has marketed versions of “management system for cable access operations” under the name CABLECAST. This product appears to be computer software that permits a user to manage its broadcast of information over cable television. Complainant distributes its CABLECAST products to institutions such as high schools. According to Complainant, its products have generated tens of thousands of dollars in profit and its clients span a number of different U.S. states.

Complainant does not own a trademark registration for the mark CABLECAST. Although not disclosed in the Complaint, the Panel has learned from a search of the U.S. Patent and Trademark Office (“PTO”) web site² that, on February 14, 2006, Complainant submitted an application to register CABLECAST plus design (Serial No. 78813874). That application is pending and has not yet been examined.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established common law rights in the trademark CABLECAST though what it describes as “a clear pattern of commercial marketing and distribution for valuable consideration, thus establishing corporate goodwill uniquely associated with the Cablecast system,” and that the Domain Name is identical and/or confusingly similar to its trademark. To establish secondary meaning, Complainant has submitted a few sales receipts and copies of some marketing materials.

Complainant also asserts that Respondent has no rights or legitimate interest in the Domain Name because Respondent’s “sole purpose” is profiting from the sale of the Domain Name, as evidenced by the fact that typing “www.cablecast.net” into a web-browser directs a user to a world-wide-web site entitled DomainCollection.com that offers the Domain Name for sale. Complainant further argues that the DomainCollection.com web site does not refer to or offer any “CABLECAST” product or service by Respondent.

Finally, Complainant contends that Respondent has registered and used the Domain Name in bad faith because registration of a domain name for the sole purpose of selling the domain name at a profit to the rightful trademark holder, as evidenced by the fact that Respondent’s administrative contact is listed as [email protected], is “the epitome of bad faith.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to establish its claim, Complainant must establish all three of the elements enumerated in Paragraph 4(a) of the Policy:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Because Complainant does not own a trademark registration, it must establish common law rights to the trademark CABLECAST by showing either that the mark is inherently distinctive or that it has acquired secondary meaning through which the relevant public associates Complainant as the source of a product or service.

The Panel’s initial reaction to the term CABLECAST, when used in connection with the products and services offered by Complainant, is that the term appears to be either generic or at least merely descriptive. An online dictionary (“www.dictionary.com”) defines “cablecast” as a “telecast by cable television.” Complainant’s use of CABLECAST in connection with software and support for the management of cable television telecasts appears to fall within the class of good and services for which “cablecast” is generic.

Even if the mark is characterized as merely descriptive, it appears that Complainant has not submitted sufficient evidence of secondary meaning to establish common law trademark rights. Complainant has not submitted evidence concerning the distribution of its marketing materials, has not submitted evidence that its mark has been the subject of significant advertising or unsolicited media attention, has not provided information sufficient to show that the few receipts it has submitted has created secondary meaning, and has not submitted other evidence sufficient to show that the public associates CABLECAST with Complainant or its goods or services.

Despite these initial impressions, the Panel declines to specifically find an absence to trademark rights for two reasons. First, because of the Panel’s ruling on legitimate interest and bad faith (below), and because Complainant must prevail on all three factors in order to win transfer of the Domain Name, it is not necessary for the Panel to decide this issue. See Greer v. Samuel, FA 672375 (Nat Arb. Forum May 31, 2006). Second, whether CABLECAST is generic or merely descriptive, and whether Complainant has established secondary meaning in the mark, are issues that will be addressed by the PTO in connection with its examination of the pending application. Given that this issue will be decided by the PTO, the Panel would not want a gratuitous finding of no trademark rights to have any impact on the PTO’s consideration of the application, or to be cited against Complainant in any other proceedings. Cf.Visual Gis Engineering S.L. v. Nitin Tripathi, WIPO Case No. D2006-0079 at n.1 (in the event of other proceedings, decisions in UDRP cases should be of no effect since the UDRP decision is based on a limited factual record and is intended to resolve only the specific dispute; moreover, other proceedings likely would be conducted under different procedural rules and substantive laws). Rather, if the existence of trademark rights is relevant in any other contexts, that important issue should be decided only after the parties have had a better opportunity to litigate the issue, including, if appropriate, through discovery, cross-examination, and credibility determinations. Greer v. Samuel, supra; see alsoMagnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525.

B. Rights or Legitimate Interests

Complainant has failed to sustain its burden of proving that Respondent has no legitimate interest in the Domain Name.

The printout of Respondent’s “www.cablecast.net” web site submitted by Complainant shows that Respondent’s site contains links to various other web sites associated with cablecasting. The registration of common words as domain names, and the posting of advertising or hyperlinks relevant to that common word, can be a legitimate interest if the advertising and links are clearly and directly related to the common word. Advanced Drivers Education Products and Training, Inc. v. MDNH, Inc (Marchex), FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (respondent had legitimate interest in <teensmart.com> domain name because site contained paid links of a teen-oriented nature); Landmark Group v. Digimedia.com, L.P., FA 285459 (Nat Arb. Forum August 6, 2004) (respondent had legitimate interest in <landmarks.com> domain name because site contained paid links to “landmark”-related websites).

Because there is a direct connection between Respondent’s use and the Domain Name, and because the Complainant has not submitted other evidence showing that Respondent’s website is a mere pretext or that Respondent otherwise has exhibited conduct showing that it lacks a legitimate interest in the Domain Name, Complainant has not succeeded in proving that Respondent lacks any rights or legitimate interests in the Domain Name. Cf. Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (respondent’s assertion that it had a legitimate interest in the <lanson.com> domain name because it was a surname was a mere pretext for bad faith registration given the fame of the complainant’s LANSON mark for champagne and the fact that the respondent posted advertising for competitive champagnes on the website to which the <lanson.com> domain name resolved).

C. Registered and Used in Bad Faith

Complainant has also failed to prove that Respondent registered and used the Domain Name in bad faith.

Complainant asserts that Respondent registered the Domain Name in bad faith because Respondent has offered to sell the Domain Name. Although circumstances indicating that Respondent registered the Domain Name primarily for the purpose of selling it to Complainant or one of its competitors would be considered evidence of bad faith, to establish such bad faith, Complainant would have to show that Respondent was aware of Complainant’s trademark when Respondent registered the Domain Name. Tan Factory c/o Jeff D’Alessio v. DefaultData.com c/o Brian Wick, FA 327674 (Nat Arb. Forum November 3, 2004). Even if Complainant could establish that it owned a trademark at the time the Domain Name was registered, there is no evidence in the record sufficient to show, by a preponderance of the evidence, that Respondent was aware of Complainant’s mark. The fact that Complainant’s sales have been so modest, and are seemingly focused on a small, specialized educational market, does not support an inference that Respondent was aware of Complainant’s mark.

If Respondent was unaware of Complainant’s mark, and if Respondent did have the right to register this Domain Name, then Respondent’s offer to sell the Domain Name would not by itself constitute bad faith. See Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (parties have right to sell assets, including domain name registrations, that have been legitimately registered without other indicia of bad faith).

7. Decision

For the foregoing reasons, the Complaint is denied.

David H. Bernstein
Sole Panelist

Dated: June 2, 2006

¹ The Center transmitted its notification to Respondent by e-mail, post and fax to all entities and persons listed as Respondent’s technical, administrative, and billing contacts, all of which were transmitted successfully, as well as to all entities and persons listed on Respondent’s web site and to [email protected] by e-mail.

² It is appropriate for panels to consider publicly available facts even if not offered by a party. Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153, n. 1; Tough Traveler, Ltd. v. Kelty Pack, Inc., WIPO Case No. D2000-0783, n.2.