WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Star Newspapers Limited v. Capital Networks Limited
Case No. DTV2001-0002
1. The Parties
The Complainant in this administrative proceeding is Toronto Star Newspapers Limited, a corporation incorporated in the Province of Ontario and having its head office and principal place of business at One Yonge Street, 6th Floor, Toronto, Ontario.
The Respondent in this Administrative Proceeding is Capital Networks Limited, a corporation incorporated in the Province of Ontario and having its principal place of business at 620 Alden Road, Suite 103, Markham, Ontario.
2. The Domain Names and Registrar
The disputed domain name is <torontostar.tv>. The Registrar of this domain name is .tv Corporation International, of Pasadena, California, United States of America.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on March 8, 2001 by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 22, 2001 by email and on January 25, 2001 by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on February 1, 2001. On February 5, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed a Response on
February 23, 2001 by email and on February 26, 2001 by hard copy. The Center received a Supplemental filing from the Complainant on March 6, 2001.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainant’s material.
The Complainant is the owner of Canadian trade-mark registration no. TMA 350,237 for "THE TORONTO STAR", registered on January 20, 1989 for use in association with the following wares and services: Wares: Newspapers; Services: Publishing of newspapers. The registration is valid and subsisting. The Complainant has used the trade-mark THE TORONTO STAR in Canada on or in association with the above-described wares and services since November 6, 1971.
The Complainant is the owner of Canadian trade-mark registration no. TMA 496,452 for "TSTV", registered on June 19, 1998 for use in association with the following wares and services:
Pre-recorded video cassettes, video laser discs, digital video discs, audio cassettes, compact discs, CD-ROM discs; and clothing, namely shirts, jackets, sweaters, pants, hats, caps and hat visors.
Television broadcasting services, telecommunication services and interactive electronic communication services, namely, the development, production, broadcast, recording and distribution of programs for television, computers and display terminals.
This registration is valid and subsisting. The Complainant has used the trade-mark TSTV in Canada on or in association with the above-described wares and services since May 26, 1998.
The Complainant owns the domain name torontostartv.com, which it registered with Network Solutions, Inc. on October 21, 1998. It also owns the domain name tstv.ca, which was registered with the Canadian Internet domain name registrar on April 27, 2000 (and modified on August 8, 2000).
Since May 26, 1998 the Complainant has offered, operated, advertised and promoted its television broadcasting channel TSTV (also known as "Toronto Star TV" or "Toronto Star Television") distributed on cable in Ontario, Canada. Since April, 2000 TSTV has been available worldwide via Internet Webcast at the domains <torontostartv.com> and <tstv.ca>.
The Complainant has invested time, money and effort in creating, maintaining and promoting its newspapers, television broadcasting channel, webcasting facilities and associated web sites in association with the marks THE TORONTO STAR, TSTV, TORONTO STAR TV and TORONTO STAR TELEVISION (collectively, the "Toronto Star Marks"). It has advertised and marketed its newspapers and television broadcast channel in association with these marks in a wide variety of media, including print (magazine and newspaper), broadcasting, internet, and sales and media literature.
The Complainant, its television broadcast channel and the web sites torontostartv.com and tstv.ca have become well-known in Canada. The Canadian public has come to associate the Toronto Star Marks with wares and services originating with, sponsored by or otherwise associated with or approved by the Complainant. Consequently, the Complainant has acquired a valuable reputation and a great deal of goodwill in its trade-marks.
TSTV reaches approximately 1.4 million homes and has generated revenues in the millions of dollars.
The Respondent registered the domain name torontostar.tv on April 11, 2000.
When accessed by an internet user, the site does not indicate a use of the name, but contains information on acquiring sites. The Respondent is not identified by name.
There is no relationship between the Respondent and the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its trade-mark or apply for any domain name incorporating any such mark. The Complainant has given no rights to the Respondent in respect of the domain name.
In 1997, the Complainant had discussions with Mr. Bill Trainor of the Respondent about providing an operational platform for the Complainant’s television station.
By letter dated October 26, 2000, the Complainant’s solicitors advised the Respondent of the Complainant’s rights in the Toronto Star Marks and asked the Respondent to stop using the domain name <torontostar.tv>.
On October 31, the Respondent advised that the demand letter had been forwarded to solicitors. A response was provided in January, 2001, in which the Respondent’s solicitor advised that her client intended to launch a locally focussed, entertainment and information-based web-site at www.torontstar.tv in May, 2001.
The following information is derived from the Respondent’s material.
The Respondent operates a series of media enterprises, including broadcasting entities and content modulation services.
The Respondent registered the subject domain name as one of several domain names registered for purposes of Respondent’s expansion plans, which include entertainment focussed web sites in various North American cities. The word "star" attached to various city names was chosen due to the special meaning that "star" has in entertainment circles. The Respondent chose the word "star" as part of the domain name due to the value that the word has to other media partners. It was believed that the word was important in the pursuit of other business relationships that were unrelated to the Complainant.
If the Complainant wishes to purchase the domain name, the Respondent would consider selling it for a fair price that represents the cost of the domain name itself and legitimate and documented expenses borne by the Respondent in planning its business activities.
5. Parties’ Contentions
The Complainant relies on its registrations of marks and says that the subject domain name essentially is identical. The Respondent has not made use of the subject domain name and it does not refer to any goods or commercial activity. As to bad faith the Complainant says that the Respondent clearly knew of the Complainant’s activities and use of its marks. It relies on passive use and the fact that that the Respondent asserted its intention to use the subject domain name only after being advised of the Complainant’s position.
The Respondent says that any similarity between the subject domain name and the Complainant’s rights is "purely incidental". It asserts that the subject domain name is one of several for its expansion plans "…which include entertainment focused web sites in various North American Cities" and the "…word ‘star’ attached to various city names was chosen due to the special meaning the ‘star’ has in entertainment circles".
The Respondent referred to correspondence between lawyers for the parties that were written "without prejudice" and which concerned the acquisition of the subject domain name by the Complainant. The Complainant objects to the Respondent doing so and states in the alternative that if the Administrative Panel were to consider a letter appended to the Respondent’s Response, it should take into account others letters in the exchange.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has registered and common-law rights to the words "Toronto star" used in various forms and circumstances. The subject domain name essentially is identical. The Respondent does not contest this fact, but states only that the connection is incidental.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The subject domain name does not lead to any commercial activity and certainly none that is identified with the Respondent. The Respondent contends that it has registered sites in various cities and that it has attached the word ‘star’ to city names for marketing purposes. It does not identify the cities or give any examples to which the Administrative Panel can refer.
The Respondent relies on memoranda dated May 17, 2000 and September 18, 2000 to show its intended use of the subject domain name and its legitimate interest in it. The first refers to "new domains". The memorandum’s chronological proximity to the date of registration of the subject domain name - April 11, 2000 - supports an inference that it is referring inter alia to the subject domain name. The second memorandum is a meeting agenda. It refers specifically to the subject domain name and an "update on progress". Beside the entry is a handwritten notation "- 5 cities Tor, Van, Ottawa, Mtl. Halifax". This is consistent with the comment in the first memorandum which states: "If the first one goes well we’ll roll out across the country, city by city (5 or 6)". The memoranda also are consistent with the response made by the Respondent’s lawyer to the demand that the Respondent not use the name.
It may be that the subject domain name violates the intellectual property rights of the Complainant, but that is not a matter to be resolved in this domain name dispute process. The focus of this proceeding is narrow and specific.
The Complainant relies on the lack of use of the subject domain name by the Respondent and the fact that it does not lead to commercial activity by the Respondent. An examination by the Administrative Panel of the Respondent’s web page showed no reference to the subject domain name.
It also is a fair inference that the Respondent was well aware of the Complainant’s use of its name and mark before the subject domain name was registered. Equally clear on the evidence in this case, is the difference in focus between the business of the Complainant and the Respondent.
These facts do not supplant the evidence adduced and assertions made by the Respondent that it registered the name and intends to use it in conjunction with the planned expansion of its business into entertainment focused web sites. The Respondent’s evidence is not strong, but the Complaint has the burden of establishing a lack of legitimate interest. This, it has not done.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
In the circumstances, the Administrative Panel is not prepared to decide whether the subject domain name was registered in or is being used in bad faith, but makes certain observations on the topic.
To support its case, the Respondent relied on "without prejudice" letters. As Canadian parties with Canadian lawyers, it should not have done so. Canadian law and practice holds that parties are not bound by positions they take in a without prejudice context. A tribunal is not entitled to reach a decision based upon them. Production of them can be prejudicial and is not of assistance to the decision maker.
A party that wishes to show that it is prepared to transfer a domain name on payment of a sum which reflects its "out-of-pocket costs directly related to the domain name" can do so by providing evidence to establish the point.
The Respondent’s statement that it "…would consider selling [the subject domain name] for a fair price that represents the cost of the domain name itself and legitimate and documented expenses borne by the Respondent in planning its business activities" (emphasis added), may not supplant the inference which an administrative panel is entitled to draw when a party offers to transfer a domain name for consideration.
Based on the evidence and its findings, the Administrative Panel concludes that the Complainant has not established its case and dismisses the complaint.
Edward C. Chiasson, Q.C.
Dated: March 21, 2001.