WIPO Arbitration and Mediation Center

Complainant is USA Video Interactive Corporation, a Wyoming corporation located in Mystic, Massachusetts, USA.

Respondent is B.G. Enterprises, an entity located in Baldwin, New York, USA. B.G. Enterprises is the business name used by an individual named William Gannon.

The domain name at issue is "usavideo.com".

The registrar is Network Solutions, Inc., located in Herndon, Virginia USA.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").

Complainant submitted its complaint in this proceeding on August 14, 2000. Respondent submitted its response on September 21, 2000. Complainant submitted a reply on October 3, 2000. Respondent submitted an opposition to the reply on November 30, 2000.

On November 30, 2000, the WIPO Arbitration and Mediation Center issued notice that Frederick Abbott, David Perkins and Mark Partridge were appointed as Panelists.

Complainant is engaged in the design of Internet video systems, services and solutions. Complainant claims that it began using the mark USA VIDEO for such goods and services at least as early as January 29, 1990. It is a publicly held company that began trading shares on April 16, 1992. An affiliate of Complainant registered "usa-video.com" on November 6, 1997. Complainant registered the domain name "usvo.com" on February 18, 1999.

On August 30, 1999, Complainant filed applications to register design marks including the words "USA VIDEO" with the United States Patent and Trademark Office. The Trademark Office has issued an initial refusal for each application, requiring, among other things, that Complainant disclaim exclusive rights in "usa video" on the grounds that the phrase is merely descriptive. Complainant’s responses to these initial refusals were due on November 24, 2000. There is nothing in the record to show whether or not Complainant filed responses to those refusals.

To establish common law rights in the USA VIDEO mark, Complainant has relied on several press releases and media articles dating back to 1998. One of those articles, dated September 28, 1999, states the following:

"After nine years as a small-time technology company concentrating on research and development, USA Video Interactive Corp. hit the expansion fast track in 1998, with its line of "video-on-demand" products.

The company . . . moved from development to implementation last year.

[T]he company . . . over the last year implemented its software across North America.

USA Video Interactive has conducted trials in 120 U.S. schools and is looking at a host of other applications. . ."

Respondent operates web sites using various domain names. On July 9, 1995, Respondent registered the disputed domain name "usavideo.com" and began using the domain name in connection with a web site offering adult content videos, stories and links. Respondent describes the content of its site as "soft-core" adult entertainment videos. From 1995 through mid-2000, Respondent received an average of about 30,000 hits per month at its web site. In addition, the web site generated annual revenues of about $35,000 in purchases of adult videos and related materials. Mr. Gannon has submitted a Declaration in which he denies that he had any knowledge of Complainant or its use of the USA VIDEO mark when he registered and began use of the "usavideo.com" domain name.

Respondent owns many registrations for domain names. Some of these appear to trade on the names of other persons or businesses (e.g. "0cindycrawford.com" and "americanmedicalassoc.com"). In 1997, it appears that Respondent was a defendant in a suit by the Federal Trade Commission alleging that Respondent was involved in an Internet scam in which consumers incurred telephone charges without their knowledge. Respondent denied any wrongdoing and the matter was settled by a consent decree.

Complainant contends that it has prior common law rights in the USA VIDEO mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and used the domain name in bad faith.

Respondent contends that Complainant does not have prior rights in the USA VIDEO mark and that Respondent used the domain name for a bona fide offering of goods and services prior to any knowledge of Complainant or this dispute. Respondent also contends that it has never offered the domain name for sale and has not used the domain name to attract Internet users to its site based on confusion with Complainant.

The first issue is consideration of the Complainant’s Reply.

The Policy and Rules applicable to this procedure do not provide for a reply as of right. There is a split in the decisions regarding the consideration of unsolicited replies. See Rollerblade, Inc. CBNO and Ray Redican Jr., ICANN No. D2000-0427 (WIPO 2000)(citing cases). In this case, we have reviewed the Reply and find it presents no evidence or legal authority affecting the outcome of the case. As a result, it has not been necessary for Respondent to make any further submission to address matters in the Reply.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(1) 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

(2) that the respondent has no rights or legitimate interest in the domain name; and

(3) the domain name has been registered and used in bad faith.

The disputed domain name is identical or confusingly similar to Complainant’s alleged mark. However, we find that Complainant has failed to prove it has enforceable rights in the mark prior to Respondent’s registration and use of the domain name in 1995. Complainant has no registrations for the mark USA VIDEO and its pending applications were filed after 1995, and in any event provide no enforceable rights until registration actually issues.

The mark USA VIDEO is descriptive, and therefore Complainant must show that the mark acquired secondary meaning prior to 1995. The mere adoption of the name would not be sufficient to establish rights. Complainant has provided no evidence showing the nature and extent of its use of the mark prior to 1995. In fact, the evidence that it has presented suggests that Complainant did not make substantial use of its mark until 1997 or 1998. Moreover, we are not persuaded that Complainant has established rights in the word mark USA VIDEO as of this proceeding. The record instead shows that the United States Trademark Office has required Complainant to disclaim the entire word mark as descriptive and there is little evidence provided on the issue of acquired distinctiveness. Accordingly, we find that Complainant has failed meet the requirements of Paragraph 4(a)(1) of the Policy.

It is undisputed that Respondent registered and began using the disputed domain name in connection with a site offering "soft-core" adult videos and materials long prior to any knowledge of this dispute. Moreover, Respondent claims that it made use of the disputed domain name without knowledge of Complainant. That claim is not rebutted and appears plausible. In 1995, it appears that Complainant’s use of the mark USA VIDEO was limited to a small development company. The name itself is descriptive and is an apt choice for Respondent’s services. Thus, it appears that Respondent has a legitimate interest in the domain name because it made bona fide commercial use prior to notice of this dispute.

Therefore, we find that Complainant has failed to meet its burden under Paragraph 4(a)(2).

There is no evidence that Respondent registered and used the domain name with the purpose of selling it for profit or that Respondent is using the domain name to disrupt the business of a competitor. As noted above, it appears that Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.

We are concerned by the evidence suggesting that Respondent is engaged in a pattern of conduct involving the registration of domain names that trade on the names of others. Such evidence in other cases has supported a finding of bad faith use and registration. Based on our findings above, we do not need to reach a final decision on this issue.

We conclude that the Complainant has failed to prove (a) that it has prior rights in the USA VIDEO mark, or (2) that Respondent lacks any right or legitimate interest in the disputed domain name. Accordingly, we find in favor of Respondent and deny Complainant’s request for transfer of the domain name.

Mark V. B. Partridge
Presiding Panelist

Frederick Abbott
Panelist

David Perkins
Panelist

Dated: December 13, 2000