CTV goes after valuable generic domain name through UDRP and loses.
Murat Yikilmaz has successfully defended an attempt by Canadian broadcasting company CTV to take away his three character domain name. CTV currently uses CTV.ca as its domain name.
In a 2-1 decision at National Arbitration Forum, the panel found that CTV doesn’t have worldwide exclusive rights to the term “CTV”, and that Yikilmaz’s purchase of the domain to attract traffic was a legitimate use.
Yikilmaz, a resident of Turkey, claimed to be unaware of the TV broadcaster.
…[Yikilmaz] has no connection with Canada or exposure to programming of the Complainant’s television network and that he had no awareness whatsoever of Complainant or its CTV mark until this proceeding was initiated. Respondent appears to be in the domain name warehousing business and “specializes†in three letter domains. In that connection, he purchased
in February of 2007 for a “substantial amount†of money.
The majority of the panel agreed with Yikilmaz that CTV didn’t enjoy worldwide rights to the three letters “CTV”:
The three letters which constitute the essence of the
domain name are generic initials and in common use by many parties to identify many goods and services. Accordingly, Complainant does not have a monopoly on these terms on the Internet. The fact that Complainant’s use of CTV to identify its goods and services is apparently exclusive to the North American continent strengthens Respondent’s argument. For example, Respondent provided evidence that “ctv†is a common abbreviation worldwide for numerous phrases, including “color television,†“consolidated tax voucher,†and “cell tolerance variation.â€
The panel ruled that use of this domain name was legitimate as it didn’t include links related to the broadcast company:
Respondent’s registration of a three-letter disputed domain name with the goal of attracting Internet traffic is a legitimate business interest, especially in this case where none of the advertisements listed on the corresponding website related to Complainant’s television operations.
One panelist, Hon. Roger P. Kerans (Ret.), dissented, saying “I fail to see why a resident of country A can interfere with an established trademark in country B even if he is free to use it in country A.”
I think Kerans misses the point here. Even if Yikilmaz lived in North America and was familiar with CTV, CTV does not enjoy full rights to the three letters. If Yikilmaz uses the domain name for a purpose that doesn’t have anything to do with the Canadian broadcaster, he should be free to do so. (Incidentally, I live in the the United States and the only Canadian broadcaster I’m familiar with is CBC.)
For more on protecting three character domain names from inevitable attacks, see “How to Protect Your 3 Character Domain Names“.
David J Castello says
Excellent ruling and I hope someone reverses the LH.com decision.
josephd says
Hon. Roger P. Kerans (Ret.)I don’t mean to be picky, but the “Ret.” part says a lot, how is a panelist that is perhaps so removed from the experience of the internet due to their era of action be able to rule on matters that they are not very familiar with?
Chris Nielsen says
On the one hand I hate to see a tradmark holder take away a domain that is not being used in a harmful way, yet CTV would have perhaps a “more legitimate” use for the domain than the current owner does that has a parking page displayed.
In cases like this where the current owner has not developed the domain, I would like to see some kind of mediation where a market price would be set that a company like CTV could purchase the domain and the owner would have to sell. I know that setting the price may not be easy, but there could be some criteria determined, and perhaps the price increased by some percentage over market value…?
I would prefer to see less litigation over domains and something that helps to resolve it in a more fair manner for both parties. Don’t get me wrong, I’ve had someone domains taken from me and they took some related ones that were clearly not infringing. Had I wanted to fight about the additional domains I could have won, but the cost and trouble was not worth it.
josephd says
I know what you mean, but say you had a domain name that you were going to develop in 6 months and all of sudden someone shows up and wants it because you are not using it. Development of domains can take years of hard work, if you are not using it, doesn’t mean you are not developing the business behind the scenes.
David J Castello says
Making someone sell because a name is not developed would set a disastrous policy. It’s equivalent to the government taking your land because you haven’t built a house on it yet. A policy like that would open the door to unlimited Reverse Name Hijacking. And don’t think that “setting a fair price” is the solution. Many UDRP filings have the Complainant saying that $500 is too much.
Steve M says
Given the strong factors which are clearly in Yikilmaz’ favor here, the fact that even one of the panelists was willing to nevertheless allow CTV to steal this domain only serves to point out again that; when three panelists are utilized by the parties as is the case here; all three should be in agreement before a domain is taken away from someone.
2 to 1 rulings should not be sufficient to do so.
Andrew says
@ Steve – but wouldn’t this be a case where the complainant would say “hey, someone found in my favor so I should be able to appeal”? I think it goes both ways.
David J Castello says
I disagree, tt should be unanimous on a 3 person panel to take away a name because the burdon of judgement should always be on the Complainant.
Most UDRP decisions are a slam dunk because most Respondents are dopey cybersquatters (read the decisions). However, if even one panelist objects the name should not be transferred because no panelist is going to object to a blatant TM violation.
Steve M says
I agree w/David, Andrew.
The burden of proof for someone wanting to take from another should rest with the one trying to do the taking.
And in any case, CTV can still certainly “appeal” ; albeit it would now have to be via a US, Canadian, or Turkish court.
As David says, most UDRP cases are very obvious; making unanimous decisions completely justified.
Andrew says
@ Steve, David – my point is not that I want the complainant to be able to appeal, but I wouldn’t be surprised if they asked for that same right if the respondent had it in a split decision.
josephd says
I think we are losing a part of the main point regardless of the merits of the complaint. The merit is not the issue, obviously and many domains have been reverse-hijacked regardless if there was merit or not. The issue I stress is the competency of the panelist. Who cares if there is merit or not to the complaint; if the panelist is someone who is not that familiar with the workings of domain names and the internet, although they may be retired judges, then the process is going to be totally skewed to the detriment of the domain holder, to wit, the retired judge in this case. Heaven knows how many domain issues I’ve dealt with this past year with lawyers who are 70 years of age and older who have absolutely no clue of what I am talking about when I discuss domains. The other party insisted on using this lawyer who is over 75 and it was a nightmare dealing with him. If this lawyer became a panelist, God forbid…