WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

A. H. Belo Corporation v. King TV and 5 Kings

Case No. D2000-1336

 

1. The Parties

Complainant is A.H. Belo Corporation, a corporation incorporated under the laws of the State of Texas, with a place of business at 400 South Record Street, Dallas, Texas 75202-4841, U.S.A.

The Respondents are King TV and 5 Kings, whose addresses are Ediny Pr. 14, Warsaw, Poland 11201; and Novii Per. 3-11, Moscow, Russia 110022 respectively.

The Respondent originally named in the Complaint was Eurostar, whose address was Mira Prospect 120-14, Moscow, Russia 180012.

Subsequent to the filing of the Complaint but prior to the commencement of the proceeding, the domain names in issue were transferred to the current Respondents King TV and 5 Kings.

 

2. The Domain Names and Registrar

The domain names in issue are "king5tv.com" and "king5news.com" . The Registrar with which the disputed domain names are registered is BulkRegister.com, Inc., whose address is 7 East Redwood, Third floor, Baltimore, Maryland, 21202 U.S.A.

 

3. Procedural History

The Complaint was received on October 5, 2000 by the WIPO Arbitration and Mediation Center by e-mail. A hard copy was received by the Center on October 9, 2000. The Center acknowledged receipt of the Complaint on October 9, 2000.

The Complainant also sent the original Respondent Eurostar a copy of the Complaint by e-mail and courier on October 4, 2000. A copy of the Complaint was also sent by facsimile and first-class mail to the Registrar, BulkRegister.com, Inc.

A request for Registrar verification was forwarded to the Registrar BulkRegister.com, Inc., on October 9, 2000. On October 9, 2000, BulkRegister.com, Inc. confirmed receipt of the Complaint by e-mail. BulkRegister.com, Inc. advised the Center that the Respondent Eurostar was not the current registrant of the domain names "king5new.com" and "king5tv.com". The Registrar advised that the current registrants of the domain names were as follows:

(1) king5news.com:

The registrant is 5 Kings, Novii Per. 3-11, Moscow, Russia 11022.

The Administrative Contact is Solncev Michail, Dimitrovs Str. 22-12, Moscow,Russia 102114.

(2) king5tv.com:

The registrant is King TV, Ediny Pr. 14, Warsaw, PL 11201, Poland.

The Administrative Contact is Uevgeniy Sleptcov at DomainHost, Pr. Vernadskogo 120-11, Moscow, Russia, 123044. Phone 138-0399.

The current status of the domain names is Registrar LOCK.

On October 13, 2000 the Center advised the Complainant by e-mail that BulkRegister.com Inc., had advised the Center that the registrants were recorded as 5 Kings and King TV. The Center advised that a rectification to the Complaint should take the form of an Amendment to the Complaint. The Center also advised that for a single case filing to have multiple respondents, while the domain name holders do not necessarily have to be the same literally, the Complainant should show that the two registrants are the same in effect. It will be in the Administrative Panelís sole discretion to make the final determination.

On October 20, 2000 the Complainant filed an Amendment to Complaint which it delivered by e-mail and courier to King TV and 5 Kings, by facsimile and first class postage to BulkRegister.com Inc., and by e-mail and courier to the Center.

On October 25, 2000 the Center compiled a Formal Requirements Compliance checklist and confirmed that formal requirements had been complied with.

On October 26, 2000, the Center forwarded Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint and Amendment to the Complaint to the Respondents King TV, 5 Kings and their Administrative, and Technical Contacts, by e-mail and post/courier. The Notification, Complaint, and Amendment to the Complaint (without attachments) were copied to the Complainant and BulkRegister.com, Inc., by e-mail. The Center advised the Respondents that the formal date of the commencement of the administrative proceeding was October 26, 2000 and that the last day for sending a Response to the Complainant and to the Center was November 14, 2000.

On November 15, 2000 the Center notified each of the Respondents, and their Administrative, and Technical Contacts by e-mail that the Respondents were in default and attached a formal Notification of Respondent Default.

The Complainant elected to have the dispute decided by a single-member Panel. The Center appointed Ross Carson as the single member Panelist. Mr. Carson duly submitted a Statement of Acceptance and Declaration of Impartiality. On November 27, 2000 the Center forwarded Notification of Appointment of Administrative Panel to the Parties.

Also on November 27, 2000 the Center e-mailed the Transmission of Case File, Complaint, and Amendment to Complaint to the Panelist and forwarded a hard copy by courier. The date scheduled for the Panelís decision is December 10, 2000. The language of the proceedings is English.

 

4. Factual Background

The Trademarks

Complainant is the parent corporation of King Broadcasting Company, which operates KING-TV Channel 5 in Seattle, Washington, U.S.A. Complainant, through its subsidiary King, has been using the trade name KING and trademarks KING, KING-TV and KING 5 for providing broadcasting services since at least as early as 1949. King is the owner of U.S. Trademark Registration No. 1,503,302 for the mark KING-TV for television broadcast services. The Complainant has attached as Exhibit B a copy of the registration information for U.S. Trademark Registration No. 1,503,302.

Complainant is also the owner of the domain names king5.com registered on July 30, 1995 and king5auto.com registered on August 9, 1999.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the domain names "king5news.com" and "king5tv.com" are identical or confusingly similar to the Complainantís U.S. registered trademark KING-TV. The domain name "king5tv.com" consists of Complainantís registered trademark KING-TV and the number "5" which is the television station channel number assigned to the Complainant for television broadcast services.

(ii) The Complainant submits that the Respondents have no rights or legitimate interests in respect of the domain names "king5news.com" and "king5tv.com" (Paragraph P of Complaint as amended). (Paragraph 4.a. (ii) of the Policy). The Complainant states that Respondents do not offer goods or services related to television broadcast services, news programs and/or the Complainantís broadcast station. Complainant submits that the original Respondentís domain name did not reflect the name of its corporate entity. Original Respondent Eurostarís domain names king5tv.com and king5news.com were registered in January 2000 over 50 years after Complainantís first use of its marks, twelve years after the KING-TV mark was registered and almost five years after Complainant registered the domain name king5.com. Original Respondent Eurostar transferred the domain names king5news.com and king5tv.com to the current Respondents several days after the Complainant sent a copy of the original Complaint by e-mail to Eurostar and to Mr. Alex Vorot the Administrative and Technical Contact of Eurostar.

(iii) The Complainant further submits that the Respondents registered the domain names in bad faith. (Paragraph 4.a.(iii) of the Policy).

 

(i) Identical or Confusingly similar

With respect to the first element of confusion between the domain names and the registered trademark for KING-TV the Complainant submits with respect to Respondentís domain name "king5news.com" that Complainantís television services include television news broadcasts as a primary component. The domain name "king5tv.com" consists of Complainantís registered trademark KING-TV and the number "5" which is the television station channel number assigned to the Complainant for television broadcast services.

(ii) Absence of Respondentís rights and legitimate interests in the domain name

The second element is whether the Respondent has rights or a legitimate interest in the disputed domain name.

The Complainant submits that the Respondents have no rights or legitimate interest in respect of the domain names "king5news.com" and "king5tv.com" (Paragraph P of Complaint as amended). (Paragraph 4.a. (ii) of the Policy). The Complainant states that Respondents do not offer goods or services related to television broadcast services, news programs and/or the Complainantís broadcast station. Complainant submits that the original Respondentís domain names did not reflect the name of its corporate entity. Former Respondent Eurostarís domain names "king5tv.com" and "king5news.com" were registered in January 2000 over 50 years after Complainantís first use of its marks, twelve years after the KING-TV mark was registered. Former Respondent Eurostar transferred the domain names "king5news.com" and "king5tv.com" several days after the Complainant sent a copy of the original Complaint to Mr. Alex Vorot the Administrative and Technical Contact of Eurostar via electronic mail.

The Respondents did not file a Reply or any evidence to demonstrate Respondents` rights to and legitimate interest in the domain names, examples of which are set out in Paragraph 4.c of the Policy.

 

(iii) Registration and Use of the Domain Name in Bath Faith

With respect to the third element as to whether the Respondents have registered and are using the disputed domain names in bad faith the Complainant submits that the transfer of the domain names from former Respondent Eurostar to King TV and 5 Kings is in violation of BulkRegister.comís Domain Name Dispute Policy. BulkRegister.com Inc., had adopted and incorporated the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, in to its Registration Agreement and as its Domain Name Dispute Policy. A copy of the BulkRegister.com Domain Name Dispute Policy is attached to the Complaint as Exhibit P. Section Eight of the Policy states that, during a dispute, the domain name registrant may not "transfer [its] domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days as observed in the location of BulkRegister.comís principal place of business after such proceeding is concluded....." Additionally, BulkRegister.com reserves the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph. Therefore, such a transfer was made in violation of BulkRegister.comís (i.e., ICANNís) Domain Name Dispute Policy.

Complainant submits that former Respondent Eurostar transferred the domain names to the Respondents in an attempt to falsify a legitimate interest in the domain names "king5news.com" and "king5tv.com" or otherwise avoid an adverse ruling in this case. Former Respondent Eurostar transferred the domain names "king5news.com" and "king5tv.com" several days after the Complainant sent a copy of the original Complaint to Eurostar and to Mr. Alex Vorot the Administrative and Technical Contact of Eurostar via electronic mail. Complainant submits that given the timing of these events, such transfer constitutes a violation of BulkRegister.comís policy, and provides further, clear evidence of Respondentsí bad faith registration and use of the domain names.

Complainant further submits that the current Respondentsí names are remarkably similar to the domain names transferred. For example, 5 Kings did not choose to register the domain name "5kings.com." Instead it chose to accept the transfer of the domain name "king5news.com". 5 Kings does not offer news services. King TV does not offer any type of television services. Instead both of the Respondents, King TV and 5 Kings, allow their web sites to serve as technical pointers to "gotoo.com." Complainant does not believe that either of the current respondents have an actual legitimate business interest in the domain names "king5tv.com" or "king5news.com" and submits that the evidence shows that the transfer of these domain names occurred under very suspicious circumstances to the current Respondents.

Complainant also submits that Respondents would have become aware of Complainantís Mark once they chose to register their own domain names and would have considered king5.com, a registered domain name of the Complainant, as a possible domain name prior to proceeding to register the domain names "king5tv.com" and "king5news.com" (Para P of Complaint as amended).

The Complainant also submits that the original Respondent, Eurostar registered the domain names "king5tv.com" and "king5news.com" using false registration information. The express courier was unable to deliver Complainantís package containing a cease and desist letter to Respondent. The private investigator found a private residential listing for Ms. Maria Gurova at Respondentís listed address. Respondent provided false contact information for several of its other domain names (Para Q of Complaint as amended). International telephone directory assistance did not show a listing for Eurostar, the administrative contact Alex Vorot or "Free Domains Parking" (See Exhibit G to Complaint, report from Marksmen, private investigator).

The Complainant submits that by using the domain names "king5tv.com" and "king5news.com" the original Respondent Eurostar attempted to attract for financial gain Internet users to Respondents` web sites and other on-line locations, including online gambling sites by creating a likelihood of confusion with the Complainantís registered trademark as to the source, sponsorship, affiliation or endorsement of Respondents` web sites (Para. R of Complaint as amended).

Complainant submits that former and current Respondents` activities and inactivity constitute evidence of bad faith registration and use of a domain name as set forth in Paragraph 4.b.(iv) of the Policy.

Complainant submits that Respondentsí activities constitute bad faith registration and use of a domain name as defined by Paragraph 4.a.(iii) of the Policy.

B. Respondent

No response with respect to the Complaint was received by the Center or by the Panel.

 

6. Findings

The first issue is a procedural issue whether the current Amended Complaint is admissible, the Amended Complaint having two Respondents, each Respondent being the Registrant of one of the two domain names in dispute. The onus of proof is on the Complainant to show that the two registrants are in effect the same person or entity as the original registrant.

When the original Complaint was filed with the Center on October 4, 2000, the Complaint was also e-mailed to the original Respondent Eurostar, and transferred by facsimile to the Registrar, BulkRegister.com Inc., of 7 East Redwood, Third Floor, Baltimore, Maryland, 21202 U.S.A.

When the Center forwarded a Request for Registrar Verification to BulkRegister.com Inc., by e-mail on October 9, 2000, the Registrar advised by e-mail on October 9, 2000 that the domain name "king5news.com" was now registered in the name of 5 Kings, Novii Per, 3-11, Moscow, RU 110022, RU and the domain name "king5tv.com" was now registered in the name of King TV, Eding Pr 145, Warsaw, PL 11201, PL.

The Complainant filed an Amendment to the Complaint substituting the two new Registrants as new Respondents in the dispute. The Complainant also filed additional evidence for the purpose of establishing a close connection between the original Registrant and the two new Registrants of the domain names in dispute.

Although the corporate names and addresses of the Registrants in the Amended Complaint differ from one another and from the address of the Registrant in the original Complaint, I infer from the evidence that there is a connection between the former Respondent and the current Respondents. First, the domain names "king5tv.com" and "king5news.com" were and are both technical pointers to the same web site: http://www.gotoo.com. Second, according to the BulkRegister.com Whois directory, the administrative contact for the domain name "gotoo.com" is Alex Vorot, the same technical and administrative contact named by the original registrant Eurostar for the domain names "king5tv.com" and "king5news.com" before the transfer of the domain names to the current listed owners, King TV and 5 Kings. A copy of the BulkRegister.com Whois information for the domain name "gotoo.com" is attached Exhibit O to the Amended Complaint. Finally, the current administrative and technical contact for the domain name "king5tv.com" has an email address of domnet7@mail.ru. The current administrative and technical contact for the domain name "king5news.com" has an email address of domnet6@mail.ru. The technical contact for the domain name "gotoo.com" has an email address of domnet3@mail.ru. All three individuals, serving as contacts for these entities, have the exact same email domains, including addresses differing by a single number. Therefore, the extreme similarity in the email addresses of the contacts, as well as the fact that both domain names serve as technical pointers to gotoo.com, a domain name also associated with Alex Vorot, leads to the inference that the current Registrants of 5 Kings and King TV are in effect the same person or entity as the original respondent.

Turning to substantive issues in the dispute, the first element which the Complainant must prove is that the domain names are identical or confusingly similar to the Complainantís trademark or service mark.

The domain names "king5tv.com" and "king5news.com" are confusingly similar to the Complainantís registered trademark KING-TV. The domain name "king5tv.com" is identical to the Complainantís trademark KING-TV with the addition of the number "5". The first and inherently distinctive portion of the domain name "king5news.com" is identical to the first portion of Complainantís trademark KING. Complainantís TV station runs news on Channel 5 in Seattle. It is common to associate a channel with the operator of a channel. The Respondents have associated the numeral 5 with the word KING to create a domain name which is confusingly similar with Complainantís trademarks KING, KING-TV and KING 5.

The second element which the Complainant is required to prove is that the Respondents have no right or legitimate interests in respect of the domain names in dispute. The domain names in dispute suggest some affiliation or connection of the Respondents with the Complainant, when there is no such affiliation or connection. The evidence filed by the Complainant shows that entry of the domain names in dispute merely links to "gotoo.com," a commercial domain name registration website. Under the burden of proof standards set out in Do The Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0624, the panel finds that Respondents have no rights or legitimate interests in respect of the disputed domain name.

The third element which the Complainant is required to prove is that the disputed domain names have been registered and are being used in bad faith.

By using the domain names "king5tv.com" and "king5news.com", Respondents intentionally attempt to attract for financial gain Internet users to the Respondentsí websites and other on-line locations, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondentsí web sites and/or the goods or services offered therein.

Additionally, original Respondent Eurostar registered the domain names "king5tv.com" and "king5news.com" using false registration information. First, the express courier hired by Complainant was unable to deliver Complainantís package to Respondent. Second, the private investigative firm found a private residential listing for a Ms. Maria Gurova at original Respondentís listed address. Further, original Respondent Eurostar provided false contact information for several of its other domain names, which are unaffiliated with Complainantís case. Additional evidence of bad faith is that the original Respondent Eurostar transferred the two domain names in dispute to the connected new Respondents after being served with the original Complaint by the Complainant.

 

7. Summary of Findings

a) The domain names in dispute are confusingly similar to the Complainantís trademarks KING, KING-TV and KING 5.

b) The Respondents have no right or legitimate interests in respect of the disputed domain names. The disputed domain names promote and suggest a connection or relationship of the Respondents with the Complainant, which does not exist.

c) The domain names have been registered and are being used in bad faith by the Respondents. When the original Respondent registered the domain names the original Respondent provided the Registrar with false registration information. Both domain names in dispute are technical pointers to the same website: http://www.gotoo.com. The new Respondents are connected with the original Respondent and are using the confusingly similar domain names in dispute to attract business to the http://www.gotoo.com website.

 

8. Decision

In the Complaint, the Complainant requested that in accordance with Paragraph 4.i. "Remedies" of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain names be transferred to Complainant. In the alternative, the Complainant seeks the cancellation of the domain name registrations. The Complainant having proved each of the three elements set out in paragraph 4.a.(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to the remedy requested. The Panel requires that the domain names "king5tv.com" and "king5news.com" be transferred to A.H. Belo Corporation.

 


 

Ross Carson
Sole Panelist

Dated: December 8, 2000