Television
Broadcasts Ltd. V. Hemmul aka Huang Zhi Ming
Claim Number: FA0111000102521
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 <tvb.tv>, registered with Dot.tv.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 23, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.
On December 6, 2001, Dot.tv confirmed by e-mail to the Forum that the domain name <tvb.tv> is registered with Dot.tv and that the Respondent is the current registrant of the name. Dot.tv has verified that Respondent is bound by the Dot.tv registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tvb.tv by e-mail.
A timely Response was received and determined to be complete on December 28, 2001.
Respondent’s Additional Response and Complainant’s Additional Response were received after the deadline set for submissions, are not in compliance with Supplemental Rule 7, and will not be considered in this case.
On
January 10, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a business organization named Television Broadcasts Limited, located at TV City, Clear Water Bay Road, Kowloon, Hong Kong.
The principal activities of the Complainant are television broadcasting, program production and other broadcasting related activities such as program licensing, video distribution and satellite broadcasting. Complainant is the largest producer of Chinese language programming in the world and has distributed its own programs to all the Chinese communities in the world.
Complainant is commonly known and widely known as TVB, and has been operating as a wireless commercial television station in Hong Kong since 1967.
The word TVB is the Complainant’s trademark since 1967 and is currently registered in Hong Kong and various countries in the world, i.e. Burma, China, Cambodia, France, Germany, Japan, Panama and Taiwan.
Complainant used the domain name <tvb.com.hk>since 1996 and in February 1999 changed its web site to the current domain name <tvb.com> which is registered by Complainant and hosted by one of Complainant’s subsidiaries, “TVB.COM Limited”.
Since Complainant’s name and trademark are well known worldwide and in particular in the Chinese communities, Respondent, being Chinese and residing in Guangzhou City where Complainant’s programs are receivable knew or should have known Complainant’s trademark before Respondent registered the domain name in dispute: <tvb.tv>.
Respondent has not made use of the domain name, <tvb.tv>, and has not been commonly known by the domain name. Respondent has no legitimate rights and interests to the domain name, <tvb.tv>.
Respondent registered the domain name, <tvb.tv>, in bad faith to attract for commercial gain, Internet users to Respondent’s web site or other on-line locations, by creating a likelihood of confusion with the 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.
B. Respondent
Respondent is Huang Zhi Ming, 5/F., No. 348-1 Tong Fu Zhong Lu, Guangzhou City, Guang Dong Province, Peoples Republic of China.
There is no formal rule to prescribe that the domain name “.tv” can only be used in television broadcasting at present.
The “.tv” is the top domain name of the country code of Tuvalu. At the time Respondent registered the domain name, Complainant had not registered a trademark in Tulavu.
Respondent did not know that “tvb” was the registered trademark before registering the domain name,<tvb.tv>.
Complainant should have kept in touch with the “Dot TV’ company. The Dot TV company has not defined the domain name , <tvb.tv> as a preparative domain name for Complainant. Once the Dot TV company issued Respondent the domain name, <tvb.tv>, Respondent must be legal keeper of it.
The word “TVB” in Respondent’s domain name <tvb.tv> is the short form of some kind of related domain name.
The registration was not done on purpose and Respondent admits that he will transfer the domain name in dispute to Complainant. The act of registering was without malice.
Respondent has no intention to
attempt and ability to attract, for commercial gain, and once knowledge of
Complainant’s position was known, Respondent shut down the web site www.tvb.tv.
C. Additional Submissions
Nothing contained in the additional filings of the parties was considered.
FINDINGS
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 <tvb.tv>.
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, <tvb.tv> 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 <tvb.tv>.
10. The trademark and disputed domain name are
identical.
11. Respondent registered and is using the domain
name, <tvb.tv>, 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, <tvb.tv>. 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 <tvb.tv>, 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 <tvb.tv> 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 <tvb.tv> 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
IT IS HEREBY ORDERED THAT THE DOMAIN NAME, <TVB.TV>, NOW REGISTERED TO THE RESPONDENT, HEMMUL ALIAS OF HUANG ZHI MING, BE TRANSFERRED TO THE COMPLAINANT, TELEVISION BROADCASTS LTD.
Tyrus R. Atkinson, Jr. Panelist
Dated January 24, 2002
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