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and Mediation Center
COMSAT Corporation v. Ronald Isaacs
Case No. D2004-1082
1. The Parties
The Complainant is COMSAT Corporation, Maryland, United States of America, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Ronald Isaacs, Bonita Springs, Florida, United States of America,
represented by Timothy J. Walton, United States of America.
2. The Domain Name and Registrar
The disputed domain name <comsatradio.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2004. On December 21, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On December 22, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2004. The Response was filed with the Center on January 24, 2005.
The Center appointed Sandra Franklin as the sole panelist
in this matter on February 10, 2005. 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,
4. Factual Background
Complainant was created by the United States Congress
in the Communications Satellite Act of 1962. Since beginning operations in 1963
as the Communications Satellite Corporation, Complainant has been widely known
as COMSAT. Complainant has 5 U.S. Trademark Registrations for COMSAT showing
commercial use in various communications fields back to 1966. Complainant also
owns the domain name <comsat.com>.
5. Parties’ Contentions
A. Complainant makes the following assertions:
1. Respondent’s <comsatradio.com> domain name is confusingly similar to Complainant’s COMSAT mark.
2. Respondent does not have any rights or legitimate interests in the <comsatradio.com> domain name.
3. Respondent registered and used the <comsatradio.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Complainant’s COMSAT mark is not identical or confusingly similar to Respondent’s <comsatradio.com> domain name.
2. Complainant’s rights are not exclusive, and Respondent could use the mark COMSAT legitimately. Others use similar names.
3. Respondent has not received any financial gain
from using the <comsatradio.com> domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel finds that Complainant has established rights in the mark COMSAT
through trademark registration and commercial use since at least 1966. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum September 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see
also Am. Online, Inc. v. Thomas P. Culver Enters., WIPO
Case No. D2001-0564 (June 18, 2001) finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark.
The mark COMSAT is a well-known mark throughout the world. In this case, the
disputed domain name contains Complainant’s COMSAT mark in its entirety,
along with the generic word “radio”. Consequently, the disputed
domain name is confusingly similar to Complainant’s mark under Policy
paragraph 4(a)(i). See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat.
Arb. Forum November 14, 2002) finding that any distinctiveness resulting from
Respondent’s addition of a generic word to Complainant’s mark in
a domain name is less significant because Respondent and Complainant operate
in the same industry; see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026
(March 23, 2001) finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or term;
see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO
Case No. D2000-1409 (December 9, 2000) finding that “[n]either the
addition of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) is
satisfied; see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat.
Arb. Forum September 14, 2000) finding that combining the generic word “shop”
with Complainant’s registered mark “llbean” does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect
of the ICANN Policy.
Once Complainant has shown a registered trademark, Respondent has the burden
of refuting the assumption that Complainant has rights. See Smart Design
LLC v. Carolyn Hughes, WIPO Case No. D2000-0993
(October 18, 2000) holding that ICANN Policy paragraph 4(a)(i) does not require
Complainant to demonstrate ‘exclusive rights,’ but only that Complainant
has a bona fide basis for making the Complaint in the first place; see
also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO
Case No. D2000-0662 (September 19, 2000) (finding that the failure of Complainant
to register all possible domain names that surround its substantive mark does
not hinder Complainant’s rights in the mark. “Trademark owners are
not required to create ‘libraries’ of domain names in order to protect
themselves”). Respondent has failed to rebut the presumption that Complainant
has rights in COMSAT and finds that COMSAT combined with a word which is a generic
indicator of services in Complainant’s field and is confusingly similar
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant states and Respondent does not deny that the website associated with the <comsatradio.com> domain name is simply a holding page stating “coming soon”. Respondent has failed to establish any rights or legitimate interests in the <comsatradio.com> domain name. Respondent erroneously states that it could use the mark COMSAT legitimately, but does not even try to argue that it is currently doing so.
Instead Respondent cites other uses, such as for a font and for a rock band, as evidence that the mark can be used legitimately by other than Complainant. Such argument is irrelevant since the uses cited are not in the same class as Complainant’s services, and it does not pertain to Respondent’s use, among other things.
There is nothing in the record to indicate that Respondent is commonly known
by the <comsatradio.com> domain name or is otherwise authorized to register
domain names featuring Complainant’s COMSAT mark. See Compagnie de Saint
Gobain v. Com-Union Corp., WIPO Case No. D2000-0020
(March 14, 2000) finding no rights or legitimate interests where Respondent
was not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name; see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy paragraph 4(c)(ii)
“to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail”.
Indeed, as Complainant and a previous Panel have pointed out, it would be extremely
difficult for Respondent to show any legitimate interest in such an established
mark as COMSAT. See COMSAT Corporation v Tele Satellite, WIPO
Case No. DTV2001-0011, noting the “long-term use, fame and significance
of the COMSAT marks” and stating that it is “essentially impossible
to believe that, in the absence of specific, compelling evidence from Respondent,
that it could be legitimately using the domain name”.
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Complainant stated and Respondent did not deny that Respondent is using the <comsatradio.com> domain name to operate a website where pop-up advertisements can be accessed. Despite Respondent’s statement that he “denies that he realized any financial gain from the registration of the <comsatradio.com> domain name or any advertising that may have been placed at the address”, this Panel notes that, typically, the owner of a website posting pop-up ads receives click-through fees for diverting Internet users to the advertisers. Respondent’s opportunistic use of the domain name constitutes bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum September 15, 2000) finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain; see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum March 21, 2000) finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent.
The Panel finds that Respondent intended to trade off the value Complainant
has built up in its mark COMSAT and knew that he would disrupt Complainant’s
business by using its famous mark. See LACER, S.A. v. Constanti Gomez Marzo,
WIPO Case No. D2001-0177 (“the lack
of use of a domain name that is not backed up by any trademark and that coincides
with a known, well-known or renowned trademark owned by someone else, does not
indicate other than bad faith in the sense of paragraph 4(b) of the Policy”.)
Furthermore, Respondent has not denied that he warehouses domain names, itself evidence of bad faith.
The Panel finds that Policy paragraph 4(a)(iii) has
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <comsatradio.com> be transferred to the Complainant.
Dated: February 18, 2005