In the recent decision of National Cable Satellite Corporation d/b/a C-SPAN v. New Media Nexus c/o Lyle, Rumble (Nat. Arb. Forum 1236010, January 26, 2009), a single member panel was faced with a dispute over 91 (that’s not a typo folks!) domains. (For a full listing of the disputed domains please click here). National Cable Satellite Corporation (“NCSC”) is a nonprofit corporation which owns and operates C-SPAN, the well known producers of public affairs television. NCSC has used the C-SPAN mark since 1979 and maintains its main internet presence at www.c-span.org. NCSC also holds trademarks for other variations of C-SPAN including C-SPAN 2 and C-SPAN 3. NCSC contends that Respondent registered numerous domains which were identical to its marks, or which included the addition of words like book, video, TV and watch, to those marks contained in the domain address.
Respondent claims to be the Managing Editor and Publisher of Sky and Space Magazine, which maintains a domain at www.SkyandSpace.com.au. Respondent also claims to operate a domain business with about 4,000 domains. Respondent’s justification for the registration of the disputed domains was that he wanted to establish a new marketing and sales network names Cyber Space Astro Network (CSPAN). Respondent argued that his trademark search revealed that the CSPAN mark had been abandoned in 2002.
The Panel reviewed the arguments presented by each side and used the three part test to determine whether the domains should be transferred. First, the Panel discussed whether the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The panel explained that Complainant had rights to the marks C-SPAN, C-SPAN 2 and C-SPAN 3 and that Respondent’s addition of a letter, symbol or generic top-level domain such as “.com” was insufficient to distinguish the domains from the C-SPAN marks. The Panel found Complainant proved this element.
The Panel next reviewed whether the Respondent has any rights or legitimate interests in the domain names. The Panel found that Respondent was not commonly known by the disputed domains. Additionally the Panel noted that the domains redirected Internet users to web sites that offered unrelated services and that this redirection was not a bona fide offering of goods and services. The Panel determined that Complainant proved this element as well.
The Panel last reviewed whether the domain names have been registered and are being used in bad faith. First, the Panel noted that the bottom of the domains contained language asking a visitor to “make an offer” regarding the domain. Therefore, the Panel explained that the primary intent of the web site was to sell the domains. Further, the Panel found that since all 91 domains were registered on the same day, this established a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel explained that Respondent’s use of a privacy service and collection of money from click-through fees associated with the domains was further evidence of bad faith. Lastly the Panel noted that since Respondent admitted to completing a trademark and/or Internet search, Respondent could not have been unaware of Complainant, that is, Respondent must have discovered C-SPAN during his search.
Ultimately the Panel agreed to TRANSFER all 91 domains.
