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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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CBS Broadcasting, Inc. v. Gaddoor Saidi

Case No. D2000-0243 (WIPO, June 2, 2000)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel determines that the registration by Respondent of the domain name , a domain name unrelated to Respondent's business, runs afoul of the UDRP, and accordingly directs Respondent to transfer the domain name to complainant CBS Broadcasting Inc., owner of the CBS service mark.  In reaching this result, the Panel holds that it can, and does, consider an offer by Respondent to sell the domain for $114,000, purportedly made during settlement negotiations, as conclusive evidence of Respondent's bad faith.

Complainant CBS Broadcasting is the owner of the well-known service mark CBS, which mark it has used in connection with its television broadcasting operations since 1933.  Complainant widely promotes its CBS mark.

Respondent Gaddoor Saidi is an individual who conducts group tours under the d/b/a "Makkah Tours."  Respondent is also a partner in the joint venture "Dar El-Eiman for Hajj and Umrah, Inc."

In 1997, Respondent registered the domain name  Respondent never operated a web site at this domain.  In addition, Respondent did not use the CBS mark in any way in his business activities.

Complainant CBS sent Respondent a letter requesting transfer of the domain.  In response, Respondent offered to transfer the domain name for $114,000.  CBS rejected this offer and commenced this UDRP proceeding.  Finding that CBS had made the three part showing necessary for relief under the UDRP, the Panel directed Respondent to transfer the domain to CBS.

The Panel found that the domain name at issue -- -- was identical to Complainant's "CBS" service mark.

The Panel also found that Respondent had no legitimate interest in the domain, as it had not used the CBS mark in its business activities, and had not operated a site at the domain in the two years it held the registration.

Finally, the Panel found that Respondent had acted in bad faith.  The Panel based this finding on Respondent's offer to transfer the domain name to CBS for $114,000, a sum well in excess of Respondent's documented out-of-pocket costs with respect thereto.  Said the Panel:

Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith. Policy, Par. 4(b)(i).  The only exception to this is where the Respondent can show that it has rights to or legitimate interests in the domain name at issue
(citation omitted).

The Panel accordingly resolved this domain name dispute by directing that Respondent transfer the domain name in dispute - - to CBS.

In reaching this result, the Panel rejected Respondent's contention that it could not consider this offer, as it was made during settlement negotiations.  Said the Panel:

The Panel rejects the argument set out in the dissenting opinion in Motorola Inc. v. Newgate Internet, Inc., ICANN Case No. D2000-0079, that offers made in the context of settlement discussion should be barred from evidentiary consideration on the basis of  United States Federal Rules of Evidence Rule 408.  Such an application of the Federal Rules of Evidence, Rule 408, is flawed.

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