Angels Baseball, L.P. v. Lee
Dongyeon
Claim Number: FA0702000925418
PARTIES
Complainant is Angels Baseball, L.P. (“Complainant”), represented by Richard
S. Mandel, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <angels.com>, registered with Korea
Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Judge Richard DiSalle as Panelist.
Sean (Myung-Suk) Choi as Panelist.
Roberto A. Bianchi as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 26, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 28, 2007.
On March 2, 2007, Korea Information Certificate Authority, Inc. d/b/a
Domainca.com confirmed by e-mail to the National Arbitration Forum that
the <angels.com>
domain name is registered with Korea Information
Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is
the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a
Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com
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 March 9, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 29, 2007 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@angels.com by e-mail.
On March 5, 2007, the Forum identified a deficiency in the Complaint,
and required Complainant to submit a translation of the Complaint into Korean. Complainant timely complied with this request.
A timely Response was received and determined to be complete on March 20, 2007.
On March 23, 2007, Complainant timely made an Additional Submission in
compliance with Supplemental Rule 7. On
March 28, 2007, Respondent timely submitted a reply to Complainant’s Additional
Submission.
On April 5, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Judge Richard DiSalle and Sean
(Myung-Suk) Choi
as Panelists, and Roberto A. Bianchi as Chair Panelist.
On April 17, 2007, the Panel issued a Procedural Order. Because English is the only language that both parties and all members of the Panel understand, the Panel decided that the remainder of the proceeding be conducted in English, and that the decision on the merits be rendered in English. Respondent was ordered to submit a translation of all his submissions into English to the Forum, with the exception of the panel decisions in Korean enclosed as exhibits to the Response. To this effect Respondent was given a time period expiring on May 1, 2007. The time period within which the Arbitrators were required to render their Decision was extended until further directive of the Panel.
On May 1, 2007 Respondent timely complied with
the Procedural Order.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In its Complaint, Complainant
basically contends the following:
-
Since
1961, Complainant and its predecessors have owned the Major League Baseball
club presently called Los Angeles Angels of Anaheim, and formerly known as
Anaheim Angels, and California Angels.
-
The Club
owns various registrations for the ANGELS marks.
-
The
ANGELS marks have been extensively marketed and promoted nationally and internationally
by media such as ESPN, CNN, etc. Through
its agents MLBP and/or MLBAM, Complainant owns numerous domain names that consist
of or contain the ANGELS marks. All
these domain names connect directly to the official website of the Angels Club
which is maintained at http://losangeles.angels.mlb.com.
-
Upon
information and belief, Respondent registered and uses the domain name in
dispute, which incorporates and is identical and/or confusingly similar to the
ANGELS marks, with the intent of misleading and diverting Internet users away
from the authorized marketplaces, on the MLB.com website and the Angels
official website, to Respondent’s site and the sites for which Respondent
includes links therein.
-
Respondent
has never been commonly known by the disputed domain name. He has not engaged in any legitimate business
under the domain name, is not a licensee of the Club, and does not own any
legitimate trademark rights in any ANGELS mark.
-
Respondent
is not using the domain name in dispute with any bona fide offering of goods or
services. Respondent’s improper use of
the domain name does not constitute a bona fide offering of goods or services. Respondent’s use of the domain name is not a
“nominative fair use.”
-
Respondent’s
use of Complainant’s ANGELS marks may not be deemed a legitimate noncommercial
or fair use of the domain name. Sites
linking to Respondent’s website offer to sell tickets not only to the Angels
games, but also to other MLB clubs and other sports.
-
Respondent
can offer no credible explanation for the adoption of the domain name other
than to trade on the fame of Complainant’s ANGELS marks.
-
Bad
faith has routinely been found where, as here, a party’s famous trademark is
registered as a domain name by someone having no connection with that party or
its products. Respondent had actual
knowledge of the ANGELS marks when it registered the domain name at issue. By virtue of the
-
Finally,
evidence of bad faith may be found in the fact that Respondent offered to sell
the <angels.com> domain name
for USD 300,000, well above Respondent’s out-of-pocket expenses, to an
undisclosed agent acting on behalf of Complainant’s agent MLBAM.
B.
Respondent
In his Response, Respondent basically contends as follows:
-
In
February 2005, Respondent purchased the <angels.com> domain name from the previous owner for Korean 25,000,000 won, without knowing
about the existence of Complainant, or hearing from the previous owner about
any dispute going on. It is not
reasonable that Respondent would register or purchase the domain name in bad
faith from the outset. Respondent had
known the word 'Angels' for tens of years before Respondent became aware of the
name of Complainant's baseball team, Los Angeles Angels.
-
'Angel,'
meaning God's messenger, is one of the first words Respondent got to know when
he began learning English as a foreign language. Respondent has been calling his two children
'Angels.' Respondent's daughter calls
herself 'Daddy's Angel.' Respondent purchased <angels.com>, thinking about that familiar word, and not of
ten-odd baseball players who do their job in
-
It is recognized that Complainant’s mark is similar to the domain in
dispute. However, the word 'Angels' is a
general noun, having no discrimination whatsoever. Complainant only has limited rights to the
trademark 'Angels,' not being granted exclusive possession rights to the word
'Angels' itself.
-
Respondent
owns the service mark 'Angels' for day care center or nursing home business
(classified as no. 43 in
-
Complainant's
trademark, not being fanciful or arbitrary, is not globally well known as an
exclusive brand name and has not gained powerful second meaning, either. Therefore, the scarcely appealing name gives
Complainant no ground to claim rights to the domain name which is similar to
its trademark even though Respondent's domain name <angels.com> is similar to Complainant's trademark.
-
Respondent
has never made a sale offer of the <angels.com> domain name to Complainant. Even now
Respondent has no idea about who the Complainant's agent is, so it is
impossible for Respondent to send Complainant an e-mail offering the domain up
for sale. Since the appendix submitted
by Complainant does not contain e-mails between Respondent and Complainant's
agent, Respondent has not figured out who the Complainant's agent is. It is only possible to guess that someone among
those who have communicated with Respondent may have been Complainant's agent.
-
Respondent
admits that he has intended to sell the domain in dispute since it is true that
he answered the e-mails which made a purchase offer. Respondent has received a lot of e-mails
proposing sale of the <angels.com> domain name, and he has responded to several of them. Most of the people who sent the e-mails made
purchase offer because they acknowledged the value of the <angels.com> domain name. Respondent, too, was well aware
of the value of the word 'angels' and that's why he purchased Angels.com for
Korean 25,000,000. Presently, Domain
names consisting of general nouns are traded at high prices.
-
The fact
that Respondent has answered several of many e-mails making purchase offers
does not reflect that Respondent has intention to disclaim his rights to and
interests in the <angels.com> domain name.
-
Complainant
induced a sale at a really high price by making a purchase offer through
his/her agent. Complaintant contacted
Respondent with the intention of entrapping Respondent by a trick without
revealing who he/she really was. This
constitutes failure to meet any duty including of good faith under general
laws.
-
After
purchasing the <angels.com> domain name, Respondent connected it to a paid search site managed by a third
party, Sedoparking.com administered by Sedo.com which is based in
-
When domain
owners choose several keywords relating to their web pages, the sites of
advertisers who have paid for those matching keywords get linked to the domain
pages. Where linked ad sites vary
depending on where (in which country) Internet users are. Due to these features of Geo-targeting system
of Google, Respondent had never known that Respondent's web page contains links
relating to Complainant before Respondent received the notice of dispute. Respondent became aware of the existence of
the links to ticket-selling sites of the baseball games that Complainant
provides only after Respondent viewed the web page provided as evidence
material by Complainant.
-
The arguable
web page provided as evidence by Complaintant shows 'For Angel try these
sponsored results’ in its upper part (in
-
This shows
Respondent's intention of containing, in the web page, information relating to
comprehensive meaning of God's messenger, Angel. It also proves that Respondent never
attempted to benefit from Complainant's trademark, ANGELS.
-
Reviewing
Overture Keyword Bid shows that keywords 'Angel' and 'Angels' are purchased by
different advertisers. Respondent has
recently changed the keyword to 'venture' for visitors who seek information
relating to Angel Capital which finances venture businesses. As a result, Respondent's web page displays
only those links to advertisers who purchased from Google keyword 'venture.'
-
If baseball
ticket-selling advertisers should purchase keyword 'venture,' Respondent's web
page would show (again) links to ticket-selling sites of the baseball games
that Complainant provides as well as those to venture capital.
-
For this
case to constitute initial interest confusion as Complainant insists,
Complainant must substantiate that most visitors to Respondent's page have
desire to get information on Complainant. However, material submitted by Complainant
fails to provide any evidence to support Complainant's contention on this. Rather, Respondent's research shows that not
many people visited Respondent's page with an intention of searching
information on Complainant.
-
There is a
strong possibility that the links to ticket-selling sites relating to
Complainant's trademark were results deliberately induced by Complainant, not
intended by Respondent.
-
The panel
is advised to take account that advertisers of those links might have
collaborated with Complainant and purchased from Google the keyword 'Angel' on
purpose, causing the arguable web page generated. Under these standards, Complainant's actions
in this case constitute bad faith. Prior
to filing its Complaint, Complainant had to know that Complainant's mark was
limited to a narrow field, and that Respondent's registration and use of the
domain name could not, under any fair interpretation of the facts, constitute
bad faith. Not only would a reasonable
investigation have revealed these weaknesses in any potential ICANN complaint,
but also, Respondent put Complainant on express notice of these facts and that
any further attempt to prosecute this matter would be abusive and would
constitute reverse domain name "hijack[ing]." Complaint, Annex 2.
C.
Additional
Submissions
In its Additional Submission of March 27, 2007, made in compliance with
The Forum’s Supplemental Rule 7, Complainant contends the following:
- Respondent concedes that the domain name he registered in 2005 is identical to Complainant’s ANGELS marks. That “angels” is the plural form of a general noun has no bearing on the analysis under the Policy. That a term has an ordinary dictionary meaning does not preclude it from operating as a trademark. Respondent does not dispute Complainant’s ownership of the ANGELS marks.
- Respondent seeks to establish rights in the <angels.com> domain name by reliance on a Korean trademark registration he alleges to have obtained in conjunction with the domain name. However, numerous panels have held that the mere existence of a trademark registration does not create a legitimate interest under the policy. The relevant registration cited by Respondent covers “retirement homes” and “day nurseries.” Respondent submitted no evidence to show that he has ever made any use of the mark in connection with such services. Indeed, Respondent concedes the point.
- Respondent makes only vague and unsubstantiated allegations about future plans to run a nursing home business with his wife, again at some unspecified time in the future after she retires. There is no indication of when such retirement is to take place or indeed any concrete evidence of any demonstrable preparations to use the disputed domain name in connection with a nursing home business.
-
Respondent’s reliance on various cases in which bad
faith was not found because the respondent has no conceivable knowledge of
complainant is misplaced. Unlike in
those decisions, Complainant’s ANGELS marks are famous throughout the world,
including in
In his Additional Submission of March 28,
2007, made pursuant to the Forum’s Supplemental Rule 7, Respondent contends as
follows:
-
Respondent
possesses rights to the Korean service mark 'Angels,' in accordance with the
governing law.
-
Complainant
alleges that Respondent's right to the mark, which allows for a day-care-center
business, is obscure and fabricated.
However, there are numerous day care centers with the name 'Angel' in
-
Respondent
registered the service mark 'Angels' in preparation for his future. For all this, Complainant denies Respondent's
rights and everything which relates to the domain for the purpose of making his
point. Trademarks in
-
Considering
the additional material submitted by Complainant, there is no disagreement
between Complainant and Respondent that Respondent got the ownership of the domain
name in dispute in February 2005.
-
However,
additional evidence material G submitted by Complainant is dated August 23,
2004, which is long before Respondent purchased the disputed domain name. If the web page provided as evidence material
by Complainant severely violated Complainant's trademark, Complainant should
have claimed his rights, and filing with any dispute resolution service
provider using the same evidence material dated August 23, 2004. However, there never were any disputes
between Complainant and the previous owner of the disputed domain name. It is not reasonable for Complainant to deny
Respondent's rights by using evidence material which occurred long before
Respondent bought the disputed domain name.
-
There
is possibility of insisting bad faith if the domain name is an originally
made-up one, but 'Angels' is a general word, which can be registered and used
by anyone.
-
Generally
domain names including general nouns belong to the party who registers them
first, and only expressing one's intention of using a domain name grants the
person who registers legitimate interest.
-
Typically
sports teams are called in combination with team owner's or region name. Just like Complainant's team is called 'Los
Angeles Angels,' Korean teams are called in the same format, such as Chunnam
Dragons, Pohang Steelers and Seongnam Ilhwa. As is shown in evidence material 9 submitted
by Respondent, it is clear that Korean public do not use the word 'Angels' for
search while expecting to find information about Complainant. If Complainant's trademark should be very
famous as Complainant insists, search-related words displayed relating to ANGELS
should contain 'Los Angeles Angels' but there is no such thing. This apparently proves that Complainant's
trademark is not famous as is insisted.
-
Sedoparking.com,
administered by Germany-based Sedo.com, has a system where Respondent has no
control over which sites get linked. The
links in question are just results in the system involving Complainant, Google
and advertisers. Therefore, Respondent
has no liability for managing usage of trademarks contained in advertisements
that Respondent cannot access or has no way of knowing the existence of. Sedo.com is used by many Korean and foreign
people, being well known enough to get introduced in domain-related news
several times in
-
Respondent
chose to use Sedo's service not with bad faith to get illegal benefit. An Internet business
which makes profits by combining advertisement with Internet users' traffic to
various domain names is a lawful business in itself. The view on legitimacy of the
businesses which advertise domains using Internet traffic can also be found in
Respondent's contention in the Pig.com case.
-
Respondent
never proposed to Complainant to purchase the domain. Though it is true that
Respondent tried to sell the domain in response to sale-proposing e-mails, this
move is lawful and does not imply Respondent had bad faith.
FINDINGS
The Panel finds that the domain name in
dispute is identical to the ANGELS marks, in which Complainant has rights. The Panel further finds that before receiving
notice of the present dispute Respondent registered the ANGELS service mark in
DISCUSSION
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 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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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.
By its use in commerce since 1961 and various
trademark registrations before the USPTO, Complainant has evidenced that it has
rights in the ANGELS mark. The Panel
finds that the domain name in dispute is identical to the ANGELS mark, since
the addition of the “.com” gTLD is not apt to distinguish it from the
trademark.
Complainant denies that Respondent has any rights or legitimate interest in the disputed domain name. In its Complaint, it denies that Respondent owns any legitimate trademark rights in any ANGELS mark.
Respondent relies on the generic nature of the word “Angels,” what would give him a right to register the corresponding domain name. The Panel believes that by this bare allegation alone any respondent could develop a right or legitimate interest in a disputed domain name where as here, a complainant has trademark rights in a mark consisting of a generic word. Because this argument leads to an absurd conclusion, it should be dismissed. Nor is more useful to Respondent his suggestion that he registered the domain name because he calls his daughter “Daddy’s Angel,” since he does not provide any evidence of such fact. In this respect the Panel observes that the domain name in dispute is <angels.com>, and not <daddysangel.com>.
Respondent’s reliance on his service mark registration for
the ANGELS mark in
As shown in the registration
certificate, Respondent obtained the registration before he received any notice
of the dispute. This is important in
considering the weight of Respondent’s trademark registration. The Panel is aware that “the general principle
that the owner of a domain name identical to a previous trademark or service
mark may, when challenged by the trademark owner, establish (retroactively) legitimate use simply by filing a fresh
trademark application in a jurisdiction other than those where the
Complainant’s trademark is registered, is a dangerous principle.” See ISL Mktg. AG, & the Union des
Associations Européennes de Football v. The European Unique Res. Org. 2000 B.V.,
D2000-0230 (WIPO July 5, 2000). However,
differing from LION NATHAN LIMITED v. WALLACE WAUGH, D2000-0030, (WIPO
Apr. 3, 2000), and as found in ISL Marketing, here Respondent’s
registration of the ANGELS mark in
Furthermore, like in ISL Marketing,
here Respondent apparently went through the registration process of his ANGELS
mark without any opposition from Complainant. This is important, since
Complainant, as contended in its Additional Submission and shown with Exhibit H,
has two Korean trademark registrations for “Angels.” One of them is for “Angels stylized”,
application No. 40-2004-49085, application date October 29, 2004, Registration
No. 642913, Registration date December 13, 2005, where the “Angels” word is
clearly displayed. The other
registration is for “ANGELS and design,” application No. 82-6389, application
date June 28, 1982, Registration No. 4000099840000, registration date April 7,
1984. Based on these registrations,
Complainant could have opposed Respondent’s trademark application, but
apparently chose not to do it.
In absence of contrary evidence, the Panel finds that Respondent’s trademark registration for ANGELS is a valid title under Korean law. See Cyrillus S.A .v. KRP Tekstil, D2001-0551 (WIPO Jul. 5, 2001) (finding that a trademark registration in Turkey was a valid title for the respondent since the trademark application had not been opposed by the complainant, and considering that an administrative panel under the Policy and Rules is not intended to carry out an assessment on the invalidity of a trademark).
The Panel is aware
that a respondent might seek the registration of a trademark in a convenient foreign
jurisdiction, where the complainant had no trademark registrations, in order to
fabricate rights or legitimate interests in a domain name. See Société Vortex contre Association bnabil@cybercable.fr, D2001-0803 (WIPO Aug. 22, 2001). Here, Respondent’s registration
was not made in any country of convenience, but in
As there are no
elements suggesting that Respondent’s trademark registration is other than
genuine, the Panel finds that Respondent, based on his trademark rights in the
mark ANGELS in class 43, has rights in the disputed domain name. See Westec
Interactive Security, Inc. v. Express Post Ltd. (Westec Div.), D2005-0811 (WIPO Oct. 7, 2005) (finding that the
respondent had rights in respect of the domain name because there was nothing
suggesting that the respondent’s Russian Federation trademark registration was
anything than genuine). In the
circumstances, Respondent’s trademark registration is consistent with
preparations of a bona fide offering of services of class 43.
In sum, Complainant failed to prove that Respondent lacks
rights or legitimate interests in the domain name.
Although the Panel’s finding under the second
element makes a finding on bad faith unnecessary, the Panel believes that
Complainant also failed in proving that Respondent registered the disputed domain
name in bad faith. In order to make such
a determination, a panel must be satisfied that the respondent was or must have
been aware of the complainant’s mark, trade name or existence at the time of
registering the domain name. In the
present case, the Panel does not believe that Complainant succeeds in proving
that Respondent knew Complainant’s ANGELS marks or trade name, or was otherwise
aware of Complainant before acquiring the domain name at issue. Although Complainant asserts that it has
profusely marketed and publicized its ANGELS marks and services in Korea, it
does not provide the Panel with evidence leading us to conclude that a Korean
citizen like Respondent should be found to know Complainant more likely than
not. Further, the Panel does not believe
that the theory of constructive knowledge may be applicable to a foreign
country, as
Independently from the fact that Complainant’s ANGELS mark is valid, it is also a generic term, in principle apt to support the assertions of Respondent, that he chose it because of its generic nature and because it can be used to refer to small children, such as those who would be taken care of in his planned day care center. The Panel believes that Complainant failed to show that its mark ANGELS is famous in Korea, or that it has acquired secondary meaning in such country, i.e. that the Korean public mainly perceives the word “Angels” as a trademark protecting an American baseball club or its services, rather than as a common noun referring to the messengers of God, or figuratively to small children. See Btex Ltd. v. Noble, FA 102464 (Nat. Arb. Forum Jan. 11, 2002) (finding that the complainant failed to show that the relevant public perceives the phrase “streetmap” as a trademark rather than as a mere description of the goods or services).
Further, it is not contested that Complainant’s agents first contacted Respondent in search of an offer to transfer the domain name for a price, and that Respondent did not know that they were Complainant’s agents. This fact does not support Complainant’s suggestion that Respondent registered the domain name with the primary purpose of selling it to Complainant. See FilmNet Inc. v Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the fact that it was the complainant and not the respondent who had initiated contact, inquiring about purchasing the domain name, tended to weigh against a finding of bad faith).
In sum, Complainant fails to prove that the disputed domain name was registered in bad faith. This finding makes unnecessary for the Panel to examine Respondent’s agreement with Sedo’s domain name “parking” services, and the resulting advertisements posted on the website at the domain name in dispute.
DECISION
Complainant having failed to establish the
second and third elements required under the ICANN Policy, the Panel concludes
that relief shall be DENIED.
Although Complainant was ultimately unsuccessful, it is
apparent that it did not lack good faith for bringing its Complaint. Accordingly, the Panel denies Respondent's
request for a finding of reverse domain name hijacking.
Roberto A. Bianchi, Chair Panelist
Judge Richard DiSalle, Panelist
Sean (Myung-Suk) Choi, Panelist
Dated: May 14, 2007
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