PARTIES: The Complainant is Television Broadcasts Ltd., Kowloon, Hong Kong (“Complainant”). The Respondent is Hemmul aka Huang Zhi Ming, Guangzhou City, Guang Dong Province, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME: The domain name at issue is , registered with Dot.tv.
1. Complainant operates a commercial television station in Hong Kong.
2. Complainant has used the letters, TVB as its trademark since 1967.
3. Complainant registered trademark, TVB under the trademark laws of Burma/Union of Myanmar; Cambodia, France; Germany; Hong Kong; Japan; Malaysia; Panama; Peoples Republic of China; and South Africa. All of the trademark registrations were prior to Respondent's registration of .
4. Complainant states that it owns and operates a web site under the domain name, tvb.com since 1999. No evidence was presented to show this to be true. But since it is not disputed by Respondent, it is taken as admitted.
5. Respondent registered the domain name, on May 20, 2001.
6. Respondent is a resident of the Peoples Republic of China and was a resident on May 20, 2001.
7. Respondent was on constructive notice of Complainant's right in its trademark, TVB, on account of the trademark registration in the Peoples Republic of China.
8. Complainant has rights and interests in the trademark, TVB.
9. Respondent has no rights and interests in the domain name .
10. The trademark and disputed domain name are identical.
11. Respondent registered and is using the domain name, , in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant shows that it has used the trademark, TVB, since 1967. Complainant shows that it registered the trademark, TVB, in a number of countries including the Peoples Republic of China. The registrations all were undertaken prior to Respondent's registration of the disputed domain name. Complainant clearly has rights in the trademark, TVB for the purposes of the requirements needed to proceed on this issue.
The trademark, TVB, is identical to the domain name, . Internet level indicators “such as ‘tv’ do not affect the similarity or identicality between the mark and a disputed domain name.” see Don Cornelius Productions, Inc. v. Fred Fluker d/b/a Futurevision, DTV2001-0026 (WIPO Dec. 7, 2001). see also Toronto Star Newspaper Ltd. v. Elad Cohen, DTV2000-0006 (Jan. 22, 2001), holding that the domain name “tstv.tv” and the trademark TSTV are identical. see also HSBC Holdings Plc v. Iain Rayner, DTV2001-0021 (WIPO Nov. 5, 2001); COMSAT Corporation v. TELE Satellite, DTV2001-0011 (WIPO June 7, 2001).
Complainant prevails on this issue.
Rights or Legitimate Interests
Complainant shows that it has used the trademark, tvb, since 1967 in its operation of the television station in Hong Kong. Complainant registered the trademark in a number of countries including the People's Republic of China. It can be inferred that Complainant has never licensed or authorized Respondent to use the trademark. It can be inferred that there is no relationship between the parties, business or otherwise, that would permit Respondent to use the trademark, tvb. Complainant contends that it has exclusive right to use the mark. see America Online, Inc. v. Tencent Communications Corp. FA93668 (Nat. Arb. Forum Mar. 21, 2000). Respondent makes no claim that he has ever been known as tvb or tvb.tv.
As a result of Complainant's showing, and Respondent's apparent lack of rights and legitimate interests in the domain name tvb.tv, the burden must shift to Respondent to demonstrate Respondent's rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000); MedStaff Alternatives, Inc. v. Dustina M. Bennett, FA97260 (Nat. Arb. Forum July 11, 2001).
Respondent may demonstrate his rights and legitimate interests in the domain name by any of the methods set out in Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy. Respondent makes no attempt to show rights and legitimate interests in the domain name. Respondent merely contends that Complainant had not registered its trademark in Tuvalu nor taken active steps to put the registrar, DOT TV, on actual notice of Complainant's trademark rights. Complainant is not required to perform either of these acts to maintain its trademark rights. Complainant registered its trademark in the People's Republic of China, the country in which Respondent is a resident.
Respondent, having undertaken to show none of the factual situations that would establish rights and legitimate interests in TVB or , it must be found that Respondent has no rights or legitimate interests in the domain name. Complainant prevails on this issue.
Registration and Use in Bad Faith
It is Complainant's responsibility to show bad faith in order to prevail in a domain name dispute. See Paragraph 4, Uniform Domain Name Dispute Resolution Policy. Complainant's pleadings and submissions are so terse and incomplete that it makes it difficult to ascertain the true facts and circumstances of this case. Respondent's submissions are even more terse and incomplete. However, it is clear that any use of by Respondent on the Internet would create a situation where it would be “inconceivable that the respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant.” Sony Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000). See also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000). That confusion is all the more evident when it is recognized that Complainant operates a television station. Any use on the Internet of in the areas of the People's Republic of China and Hong Kong, is bound to cause confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. See Paragraph 4(c)(b)(iv), Uniform Domain Name Dispute Resolution Policy. The question remains whether Respondent will intentionally attempt to attract, for commercial gain, Internet users to his web site or other on-line location. Respondent makes no attempt to show what he intends to do with the domain name. But upon notification by Complainant to Respondent of the possible trademark infringement between the trademark and the domain name, Respondent shut down the web site.
Respondent admits the following: “But this registration is not on purpose, and this is ratified by Television Broadcasts Limited in the communicate. We admit that we will transfer the domain name in dispute to Television Broadcasts Limited preferentially without damnify. And this attitude is ratified by Television Broadcasts Limited either…after realizing the attitude of the Television Broadcasts Limited, I have shut down the website…” Respondent states that he did not know of Complainant's trademark rights when the domain name was registered. The domain name was not registered “with malice” Respondent contends. There is no evidence to find “malice” in this case, and none is found. Malice has no part in domain name dispute proceedings.
The admission of Respondent that he will transfer the domain name in dispute to Complainant “preferentially without damnify” is taken to be an admission that the domain name infringes on the trademark of Complainant and that the use of the domain name will cause the situation proscribed by Paragraph 4(b)(iv). Under these circumstances, it is found that the elements of this section have been met. Complainant prevails on the bad faith issue.
DECISION: TRANSFER ORDERED
IT IS HEREBY ORDERED THAT THE DOMAIN NAME, , NOW REGISTERED TO THE RESPONDENT, HEMMUL ALIAS OF HUANG ZHI MING, BE TRANSFERRED TO THE COMPLAINANT, TELEVISION BROADCASTS LTD.
Dated January 24, 2002