5th Mar 2012
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UTV Limited v. Unitedeurope Consulting, Kwang Pyo Kim
Case No. D2011-2293
1. The Parties
The Complainant is UTV Limited of Belfast, United Kingdom of Great Britain and Northern Ireland, represented by A&L Goodbody Partners, United Kingdom.
The Respondent is Unitedeurope Consulting of Seoul, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <utv.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the disputed domain name. On December 30, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 9, 2012, the Center issued a Language of Proceedings notification, inviting comment from the parties. On the same day, the Complainant submitted a request that English be the language of the proceedings. The Respondent did not submit any request with respect to the language of the proceedings.
On January 10, 2012, the Respondent replied in Korean that it had not received the documents submitted by the Complainant and requested copies of them by email. On January 10, 2012, the Complainant confirmed to the Center and the Respondent that it had sent copies of the Complaint including annexes to the Respondent on December 28, 2011. On January 11, 2012, the Respondent requested again the Center to send the documents submitted by the Complainant, and the Center forwarded the respondent the Complaint including annexes by email on the same date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Response was filed with the Center on February 6, 2012.
The Center appointed Alfred Meijboom, Andrew J. Park and The Hon. Neil Brown QC as panelists in this matter on February 22, 2012. The Panel finds that it was properly constituted. Each member of 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, paragraph 7.
4. Factual Background
The Complainant was formed in November 1958 as Programme Contractor for Northern Ireland and was incorporated as Ulster Television in 1959. It has been broadcasting television and radio in Northern Ireland since October 1959. As such the Complainant is the TV arm of UTV Media plc, which is a media company in United Kingdom and Ireland incorporating radio, television, new media and publishing. The Complainant has a national registered device mark UTV with registration number 2233923A in United Kingdom since May 25, 2001 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42 for, inter alia, computer related goods and service, television and radio broadcasting services and entertainment.
The Respondent is a Korean company that has been registering common word domain names and combined letter domain names for investment and development since 1998. The disputed domain name was first registered on August 11, 1997. The Respondent registered the disputed domain name on August 19, 2005 after it became available for registration.
5. Parties’ Contentions
The Complainant claims that it had built up considerable unregistered trademark rights in the UTV mark long before it filed its application for the registered device mark mentioned in paragraph 4 above (the unregistered and registered trademarks for UTV together referred to as the “Trademark”). The disputed domain name is identical to the Trademark.
The Respondent has no rights or legitimate interests in the disputed domain name for several reasons. First, the Complainant has never granted a license or authorized the Respondent to use the Trademark. Second, the Respondent has never used the disputed domain name or a name corresponding to the disputed domain name in connection with bona fide offering of goods and services as allegedly demonstrated by different screenshots of web pages for the disputed domain name as of March 2, 2001 until now, which show a document entitled “sexy Japanese majures sexy pictures of sexy women” (March 2001), an announcement of contents “coming soon” (from September to December 2003), links to various links for, inter alia, UTV for sale, UTV Vehicles, UTV Internet, Travel, Lifestyle and Real Estate (February 2004), “popular links”, including a “News” category (from March 2004 to July 2005), a webpage headed “Utv.com – Ubiquitous Television” with different links to computer related goods and services (from December 2005 to February 2006), links to UTV Wheels, UTV Windshields, UTV Live (March 2007) and a Korean text with the English words “This name is not for sale” (as of July 2008). The Complainant further referred to UDRP cases which found that the use of domain names for sponsored links was not in connection with bona fide offering of goods or services. Third, the Complainant has seen no evidence to suggest that the Respondent has ever been commonly been known by the disputed domain name. And fourth, the Complainant argued that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers, because Internet users were automatically redirected to either a website that has nothing to do with the link heading, or they were sponsored links, demonstrating that they were intending to mislead customers for commercial gain.
Further, the Complainant alleged that the disputed domain name was registered and used in bad faith because it was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or its competitor, as demonstrated by the words “This name is not for sale” which, according to the Complainant, clearly demonstrates how the Respondent can be contacted in order to purchase the disputed domain name. According to the Complainant, it has sought to purchase the disputed domain name through “www.sedo.com”, which would have suggested a “mid 5 figure” bid in order to have a fair chance of acquiring the disputed domain name. The Complainant further submitted that the Respondent intentionally attempted to attract Internet users to its website under the disputed domain name, by creating a likelihood of confusion with the Trademark, and that the Trademark was of such a well-known nature that the Respondent must have known of the Trademark as a web-based search at the time of registration of the disputed domain name would have shown the Trademark and the Complainant’s rights therein. The Respondent sought to take advantage of the Complainant’s well-known Trademark by creating a likelihood of confusion with the Trademark. Finally, the Complainant noted from previous decisions in UDRP cases against the Respondent that the Respondent has a history of using domain names to intentionally attempt to attract for commercial gain Internet users to its websites, by creating confusion with the relevant complainant’s marks. The fact that the disputed domain name is currently inactive can also constitute the disputed domain name being used in bad faith.
According to the Respondent the Complaint was filed over seven years after the Respondent registered the disputed domain name, which the Respondent considers a substantial delay by any measure and an eternity in “Internet time.” The Complainant does not explain why it waited so long to initiate the Complaint. This long delay bars the Complaint under the doctrine of laches, which was recognized in other cases under the Policy. The Respondent continues to claim that even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration. In this matter the Complainant’s long delay particularly demonstrates that laches is appropriate because the Complainant has been aware of the disputed domain name since at least 2000 when it initiated a UDRP claim against the disputed domain name’s former owner ( WIPO Case No. D2000-0077, which was subsequently terminated). WhoIs database shows that the Complainant has watched the disputed domain name change through at least three owners over the past twelve years and only now, after the Respondent has owned the disputed domain name for over seven years, did the Complainant file its Complaint. Accordingly, the Respondent asked that the Complaint be denied on this basis alone.
The Respondent claimed that it acquired the disputed domain name on August 19, 2005 because it was an available three-letter combination to which it believed no individual or entity could have exclusive rights, and submitted a declaration of the “owner” of the disputed domain name, Mr. Kwang Pyo Kim, who supported this view.
The Respondent takes no issue with respect to the disputed domain name allegedly being identical to the Trademark, only to note that the Complainant holds a foreign trademark of which the Respondent, who is established in Republic of Korea, had no knowledge.
The Respondent claimed that it has rights and a legitimate interest in the disputed domain name because “utv” is simply a three-letter combination and a common acronym for many entities unrelated to the Complainant. It asserts that most notably the acronym stands for “utility terrain-vehicle.” A Google search excluding references to the Complainant yielded over 596,000 third party results. This third party use is evidence that the Complainant does not have exclusive rights to the letters “utv” and, thus, supports the Respondent’s legitimate interest in the disputed domain name. Under reference to cases under the UDRP the Respondent claims that it is well established that, like common words, anyone is entitled to register domain names incorporating letter combinations to which a complainant does not have exclusive rights, and the Respondents’ legitimate interest is established. The Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain in connection with the bona fide provision of advertising services. The Respondent is not alone in having such a business model, and it is an accepted and not unusual practice. As noted by the Complainant, over the past seven years, the Respondent has used the disputed domain name to post advertising links for utility terrain-vehicles, general topics of interest, such as financial planning, travel, and real estate. However, the Complainant’s argument is mistaken and misleading in stating the links do not resolve to third party pages. When the pages were live the pages were hosted by a third party and the links operated correctly. It is, however, clear that when the Complainant accessed the pages through “www.archive.org” the links were no longer active. The Respondent concludes accordingly that it has a legitimate interest in the disputed domain name and that the Complaint should therefore be denied.
The Respondent further alleged that it did not register and use the disputed domain name in bad faith. Because of the substantial third party use of the term “utv”, the Complainant must produce specific evidence of bad faith since there is no proof that the Trademark was the reason the Respondent registered the disputed domain name. The Respondent claimed that the Complainant failed to provide such evidence. The Complaint seems to infer that the Respondent had “constructive knowledge” of the Trademark because the Complainant is claimed to be one of the most successful media companies in the United Kingdom and Ireland. According to the Respondent the Complainant ignores the fact that “utv” is merely an acronym and not a well-known fanciful trademark. Consumers certainly do not see the Trademark as the exclusive meaning for the letters “utv.” There is no logic to the allegation that the Respondent targeted the Complainant when it registered the disputed domain name. The Respondent claims that the undeniable fact is that “utv” is simply a three-letter acronym, and it is used by other entities unrelated to the Complainant. As a common acronym, registration of “utv” is akin to registering a common word domain name. Nor can it be argued that the Respondent should have known of the Trademark when it registered the disputed domain name. The Respondent is based in Republic of Korea, and the Complainant operates in Ireland and the adjacent countries. There is no evidence that the Respondent knew of the Complainant when it registered the disputed domain name over seven years ago. Contrary to the Complainant’s allegation that the Respondent should be deemed to have constructive knowledge of the Trademark, knowledge of a foreign trademark is not imputed under the UDRP. Therefore, absent proof of the Respondent’s knowledge of the Complainant and its Trademark there can be no finding of bad faith intent to register the disputed domain name.
The Respondent continues to argue that the Complainant is wrong that a link on a webpage offering the disputed domain name for sale is evidence of the Respondent’s bad faith. Anyone has the right to register and sell a domain name which was registered based on its generic meaning. Not only do such sales fail to establish bad faith, they can support a respondent’s legitimate interest under the appropriate circumstances. It only constitutes bad faith registration to register a domain name with the intent to sell it to the complainant trademark owner. According to the Respondent there is absolutely no evidence the disputed domain name was registered with this intent. While the website had displayed a link which stated “To purchase this domain, click here,” this is a standard link appearing on many parking system hosted web pages. Finally, it should be noted that a link for an offer to sell the disputed domain name is not “use” that would attract Internet users to the website by creating a likelihood of confusion with a trademark, as is required under paragraph 4(b)(iv) of the Policy.
6. Discussion and Findings
Language of the Proceeding
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, the Complainant submitted a request for this dispute to proceed in English and the Respondent made no objections, and filed its Response in English. Therefore the Panel accepts that English is the language of the proceedings.
Doctrine of Laches
The Respondent first relied on the doctrine of laches for the reason that the Complainant waited over seven years before filing its Complaint against the Respondent. Although the Panel cannot rule out that the doctrine of laches could apply to this case for the reason put forward by the Respondent, the Panel rather prefers to decide this matter on the merits as set forth below.
Assessment of the case
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
i. the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is of the opinion that the Complainant sufficiently showed that it has rights in the Trademark, which predate the registration of the disputed domain name by the Respondent. Although the registered trademark as referred to in paragraph 4 above is for a device mark, the Panel is of the opinion that this device mark consists of the letters “utv” in a specific graphical form, which can only be represented in a domain name as “utv.” Therefore the Panel finds that the disputed domain name is identical to the Trademark UTV, and the first element is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel is of the opinion that the Complainant failed to make such prima facie case for the following reasons.
The disputed domain name consists of only three letters. The Respondent submits a declaration of Mr. Kwang Pyo Kim, who claims to have registered the disputed domain name, that he registered the disputed domain name because it is a three-letter combination to which he believed no party could claim exclusive rights and it also an acronym for many different third party uses, and without him having knowledge of the Trademark. The Respondent further claims that “utv” stands for “utility terrain-vehicle” and submits evidence that the Complainant does not exclusively use “utv” in outside the context of television.
The Complainant submits that the different screenshots of the websites for the disputed domain name over the period from March 2001 and further, show that the different owners of the disputed domain name, including the Respondent, have mainly used the disputed domain name for advertised links for different products. But almost none of them compete with the goods and services for which the Complainant registered and uses the Trademark.
The Respondent admits that it has been registering common word domain names and combined letter domain names for investment and development since 1998 and that three or four letter domain names are registered because they best fulfill the purpose of a domain name which is to be easy to remember, and which are, therefore, commercially valuable. The Respondent further claims that the way it hosts its domain names (including the disputed domain name) with “parking” services is an industry-wide practice. It is well established that operating parking services using a trademark in a domain name and providing connection to services competitive with the trademark owner, does not establish rights or legitimate interests (e.g., Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021, with reference to other cases). The disputed domain name would not be used in connection to a bona fide offering of services or goods if there is evidence (i) that the disputed domain name has been used to compete with the Complainant, or (ii) of the Respondent’s intent to misleadingly divert consumers or to tarnish the Trademark for commercial gain (cf. paragraph 4(a) of the Policy).
In this case, however, the Panel did not find evidence that the landing pages associated to the disputed domain name support a finding of the Respondent attempting to compete with the Complainant or having the intent to misleading consumers. The Panel endorses the finding of the panel in Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (with reference to other relevant cases) that use of “short terms that may be appropriate for a vanity email business, or even for sale, is a legitimate business model.” The disputed domain name typically is such a short term which may represent many acronyms. This could have been different if the Complainant’s claim that that the Trademark has a strong reputation and is widely known outside the (Northern) Ireland region, and – as the Complainant implied – more particularly in Republic of Korea where the Respondent is located1, is true, as in such case the Respondent would have registered and used the disputed domain name with the actual knowledge of the Trademark and may have been using the disputed domain name in bad faith. The Panel did, however, not find any evidence in support of the Complainant’s allegations of the Trademark’s strong reputation and the Respondent’s presumed knowledge of the Trademark before these administrative proceedings were initiated.
The Respondent could therefore have registered and used the disputed domain name. In absence of evidence of use of the disputed domain name to compete with the Complainant, to disrupt the Complainant’s business and/or to mislead consumers into letting them believe that they visited the Complainant’s website, the Panel is of the opinion that the disputed domain name is merely a generic short acronym in which the Respondent has a legitimate interest to use.
The Complainant therefore failed to demonstrate the second element of Paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Because the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy, the Panel need not discuss the issue of bad faith.
For the foregoing reasons, the Complaint is denied.
Andrew J. Park
The Hon. Neil Brown QC
Dated: March 5, 2012