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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barry Diller v. INTERNETCO CORP

Case No. D2000-1734

 

1. The Parties

The Complainant is: Mr. Barry Diller, Chairman and Chief Executive Officer of USA Networks, Inc., a Delaware corporation, with its principal place of business at 152 West 57^th Street, New York, New York 10019, U.S.A. The Complainant is represented in this proceeding by: Robert P. Haney, Esq., Covington & Burling, 1330 Avenue of the Americas, New York, New York 10019, U.S.A.

The Respondent is: INTERNETCO CORP, whose address is 185 South First Street, Lehighton, Pennsylvania 18235, U.S.A.

 

2. The Domain Name and Registrar

The domain name in dispute is: <barrydiller.org>.

The registrar for the disputed domain name is: Network Solutions, Inc.(NSI), 505 Huntmar Drive, Herndon, Virginia 20170, U.S.A.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (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 Policy (the Center, the Supplemental Rules).

The Complaint was filed on December 13, 2000. On December 19, 2000, the Center requested that the registrar NSI check and report back on the registrant for the domain name <barrydiller.org>. On December 27, 2000, NSI reported to the Center that the registrant was the Respondent.

On December 28, 2000 the Complaint was delivered by e-mail and hard copy to the Respondent. The Respondent did not file a response within the twenty (20) day time period required by Rule 5 and, on January 17, 2001, the Respondent was declared to be in default.

The Administrative Panel completed submission of their Declarations of Impartiality and Independence by February 21, 2001 and the Center proceeded to appoint the Panel on February 23, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by March 9, 2001.

 

4. Factual Background

The Complainant, Mr. Barry Diller, is a well-known businessperson in the film, television, and interactive technology industries. The Complainant is Chairman and Chief Executive Officer of USA Networks, Inc. (USAi), a diversified media and electronic commerce company which owns the cable television networks USA Network, SCI FI Channel, and Home Shopping Network, as well as Studios USA and USA Films. These companies develop, produce, and distribute television programs and films. USAi also owns Ticketmaster and has a controlling interest in three (3) publicly traded subsidiaries, each of whose primary business involves the Internet: Ticketmaster Online-Citysearch, Inc., Hotel Reservations Network, Inc. and Styleclick, Inc. The Complainant also owns the domain name <barrydiller.com>.

The Respondent registered the disputed domain name <barrydiller.org> on April 2, 1999. The name has, at times, been linked to sites that solicit customers to view fee-based pornography (Annexes E and F).

On September 27, 2000, Complainant’s attorneys sent a letter to the Respondent alleging trademark infringement and demanding that the disputed domain name be turned over to the Complainant (Annex I). The Respondent did not reply to this letter.

According to Complainant's legal Counsel, on October 6, 2000, they telephoned the Respondent’s contact person, Mr. Dan Lander, and reiterated the demands in their September 27, 2000 letter. The Respondent reportedly stated it "would be willing to develop the web site into a promotional site for the Complainant" (Complaint p.8).

The Complainant rejected the Respondent’s offer of collaboration and insisted the disputed domain name be turned over to the Complainant. In the face of Respondent’s continued refusal, the Complainant is seeking to take possession of the disputed domain name through this proceeding.

 

5. The Parties’ Contentions

Complainant’s Contentions

- The domain name <barrydiller.org> is identical to the Complainant’s name.

- The Complainant possesses a strong common law service mark in his personal name by virtue of his position as one of America’s most prominent businesspeople. His personal fame and reputation have caused his name to acquire a secondary meaning among participants in the industries in which he works.

- Neither the Respondent, INTERNETCO CORP, its contact person, Mr. Lander, nor any of the other sites linked to Respondent has ever been known as "Barry Diller," or been associated in any way with that name. Nor is the Respondent making any legitimate, noncommercial fair use of the disputed domain name; the Respondent instead is making a commercial use of the name.

- The Respondent registered and used the disputed domain name as a means of channeling traffic to his pornographic web sites.

- The association of Complainant’s name with pornographic material tarnishes his reputation and diminishes the value of his name.

- The Respondent’s bad faith is apparent in its attempt to sell or rent the domain name to its rightful owner at a premium.

- The very act of registering so famous a name in which the Respondent has no rights is an act of bad faith.

Respondent's Contentions:

The Respondent did not file a response within the allotted time and was declared in default.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <barrydiller.org> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- 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 is claiming common law servicemark rights in his own name which he contends is widely known to the American public as an unusually successful and knowledgeable business executive and investor. To substantiate this claim, the Complainant has shown, inter alia, that his name is cited in the U.S. media with great frequency (Annex M and N citing articles in Fortune, Time, Forbes, etc.).

The disputed domain name, <barrydiller.org> is identical to the Complainant’s name, it being by now well-settled that the addition of a top level domain and the dropping of a space are irrelevant for the purposes of domain name mark analysis (see e.g. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, June 9, 2000).

The Panel finds the Respondent has registered a domain name identical to a service mark in which the Complainant has common law rights.

Legitimate Rights or Interests

The Respondent appears to be using the disputed domain name only to link to many other domain names that offer pay-per-view pornography while, at the same time, making overtures to sell or rent the name. As will be clear in the bad faith section, this cannot qualify as a legitimate right or interest under the Policy as it infringes the Complainant’s common law mark rights in his own name.

Registered and Used in Bad Faith

The Panel finds the Respondent is making a patent commercial use of the disputed domain name, ie, the Respondent is using a well-known name in the media industry to attract clients to its pay-per-view pornography websites. This violates the bad faith provision of the Policy at para 4 b(iv): "by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location."

The Panel further agrees with the Complainant that the Respondent's attaching the disputed domain name to a web page stating: "Welcome! Why not help me build this site…." followed by the Respondent's contact details is an attempt to sell or rent the domain name for much more than the Respondent paid, in violation of the Policy at 4b(i).

Finally, the Panel agrees with the Complainant that the Respondent, in bad faith, is tarnishing the Complainant’s common law servicemark by associating the Respondent’s name, without the Respondent’s permission, with commercial pornography in violation of the Policy 4c(iii) (see also World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256, June 7, 2000).

 

7. Decision

The Panel has found that the Respondent registered a domain name identical to the common law service mark of the Complainant, viz., the Complainant's own name . The Panel has also found that the Respondent has no legitimate rights or interests in the disputed domain name and registered and was using the name in bad faith. Thus, pursuant to ICANN Policy para 4(i) and Rule 15, the Panel orders that the registrar NSI transfer the domain name <barrydiller.org> from the Respondent, INTERNETCO CORP, to the Complainant, Mr. Barry Diller.

 

 

Dennis A. Foster
Presiding Panelist

Jeffrey H. Kaufman
Panelist

Richard W. Page
Panelist

Dated: March 9, 2001