A well known domainer Chad Folkening, Ecorp beat back a UDRP from a powerhouse, the Tribune Media Services, Inc. of Chicago, Illinois, on the domain name ChannelGuide.com despite the presence of a bang on trademark,  the domain being used as a parked page and the case being decided by only a one person panel.

Here are the relevant parts of the decision:

“Complainant is the owner of United States Trademark Registration No. 1,943,605 for the CHANNEL GUIDE trademark, covering “magazines featuring programming information for television and cable television networks” in International Class 16.”

“Complainant’s predecessor-in-interest first used the CHANNEL GUIDE mark in 1984, and first registered the mark in 1995.”

“The Domain Name was created on June 26, 1997.”

“It is undisputed that Complainant has long-established rights, through use and registration, in its CHANNEL GUIDE trademark.”

“Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name because, while Respondent has been using it commercially, Respondent has made no bona fide use of it. Respondent is not affiliated with Complainant nor has Complainant authorized Respondent to use the CHANNEL GUIDE mark.”

“Respondent is not using or preparing to use the Domain Name in connection with a bona fide offering of goods and services, as evidenced by the fact that the Domain Name’s website contains nothing more than pay-per-click links and does not itself offer any original content.”

“According to Complainant, Respondent is not making a legitimate noncommercial or fair use, but instead is using the Domain Name in a misleading manner to attract consumers looking for Complainant’s CHANNEL GUIDE services, and then diverting them through links to third-party websites, including sites of Complainant’s competitors. ”

“The Panel finds that Complainant has made out a prima facie case on this showing as supported by the evidence Complainant has submitted.”

“Respondent asserts that it has a legitimate interest in the Domain Name because it is made up of two common dictionary terms that were attractive to use as an integral part of the development of its “Broadband Channel vertical” and as an introductory directory site for its 1,089 other channel-related domain names, both of which constitute bona fide purposes. As discussed above, while Respondent concedes that the Domain Name is currently linked to a pay-per-click site, it stresses that it is making, and has been making for years, substantial preparations to use the Domain Name. This is purportedly evidenced by Respondent registration of the 1,089 other channel-related domain names, which Respondent claims will be listed in a vast directory through a site linked to the Domain Name, and as part of a well-developed system of resources related to Broadband Internet services.”

“The Panel finds that Respondent’s statements are unconvincing, where it claims that it intends to use of the Domain Name for a “Broadband Channel vertical” or for a vast directory of channel-related domain names. The Domain Name, despite Respondent’s ownership for almost 14 years, has been used for nothing other than to link to a pay-per-click website. ”

“The Panel, using the Internet Archive’s Wayback Machine, checked random dates spanning the last 10 years and found that, in all cases, the Domain Name was linked to pay-per-click web pages. ”

“The same is true for Respondent’s other channel-related domain names, such as <businesschannel.com>, <videochannel.com> and <muscichannel.com>. Thus, there is no evidence that Respondent is or has been making substantial preparations to use the Domain Name for any of the reasons alleged by Respondent.”

“The Panel finds that, in view of the evidence before it and Respondent’s unconvincing arguments, Respondent has failed to rebut Complainant’s prima facie showing and has failed to establish any rights or legitimate interests in the Domain Name based on preparations to use it or actual use.”

“the Panel concludes that Respondent’s use of the Domain Name (in connection with a pay-per-click site with links to Complainant’s competitors) constitutes a bad faith and infringing use. ”

However the panel found:

“There is insufficient evidence to show that Respondent targeted Complainant and its CHANNEL GUIDE trademark, and thereby intended to disrupt Complainant’s business, when it registered the Domain Name almost 14 years ago in 1997. “

“The CHANNEL GUIDE mark is comprised of two common words and Complainant has provided little evidence of the mark’s reputation or distinctiveness (outside of the trademark registration itself), all facts which weigh against a finding of relevant notice and targeting in this case.”

“”Further, Respondent has registered thousands of “channel-related” domain names, which is another point that weighs against a finding that there was targeting of Complainant’s trademark, in particular. “

“Respondent has also indicated that the USPTO’s on-line searchable trademark database was not available in 1997, when the Domain Name was registered. “

“In view of all the facts and circumstances presented in this case, the Panel determines, on balance, that the Domain Name was not registered in bad faith, even if it has been used by Respondent in an infringing and bad faith manner. This case is better suited for a court rather than UDRP procedures.”