WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TCN, Inc. v. 3v Networks
Case No. D2008-0134
1. The Parties
Complainant is TCN, Inc., based in the United States of America, represented by Traverse Legal, PLC, also based in the United States of America.
Respondent is 3v Networks, based in the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <tcn.com> is registered with CyDentity, Inc. d/b/a Cypack.com.
3. Procedural History
Complainant submitted the Complaint to the WIPO Arbitration and Mediation Center (“Center”) in English on January 29, 2008, identifying the Registrar of the disputed domain name, <tcn.com> (“the Domain Name”), as CyDentity, Inc. d/b/a CyPack.com (“CyDentity”).
On January 30, 2008, CyDentity confirmed by email to the Center that Respondent is listed as the registrant of the Domain Name, and that the Registration Agreement is in Korean. Consequently, on February 5, 2008, the Center notified Complainant that the Complaint was deficient because it was in English. The Center requested Complainant to remedy this defect or to submit a request to proceed in English that explained why Complainant believed it would be appropriate to do so.
On February 6, 2008, Complainant submitted a letter that requested the Center to hold the proceedings in English for several reasons. Complainant also noted that it does not oppose allowing Respondent to submit its response in Korean.
On February 7, 2008, the Center provided a formal Notification of Complaint and Commencement of the Proceedings to the parties, which was written in both English and Korean. The Center verified that the Complaint together with Complainant’s letter satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy), 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”). The Center informed Respondent of Complainant’s request to hold the proceedings in English. The Center noted that Respondent was required to submit its Response by February 27, 2008. The Center further stated that Respondent should notify the Center by February 14, 2008, if Respondent wished to file a Response but was experiencing language difficulties with the Complaint, and that in the absence of such notice, the Center would assume that Respondent had no objection to proceeding in English.
On February 19, 2008, Respondent submitted a Korean-language email stating that it was difficult for it to understand the English-language Complaint, and requesting that the Complaint be translated into Korean. Respondent reiterated its request for a Korean version of the Complaint in an email of February 23, 2008, which was also in Korean.
On February 27, 2008, the Center notified the parties, in both English and Korean, that the Center had decided to accept the Complaint in English and to accept a Response in either English or Korean. The Center also noted that the Panel has discretion to determine the language of the proceeding and to request a translation of any of either party’s submissions. The Center further stated that unless Respondent submitted a further communication by the previously notified due date, the Center would regard Respondent’s prior emails as constituting its Response.
Respondent submitted several additional emails, in Korean, arguing that the proceeding should be conducted in Korean. The Center replied by reiterating that it had decided to take the approach set forth in its notice of February 27, 2008, and that the ultimate determination as to the language of the proceedings would be made by the Panel on appointment.
On March 17, 2008, the Center notified the parties that it had appointed the undersigned Panelist to resolve this dispute. On April 3, 2008, the Center notified the parties that the date for decision had been extended until April 6, 2008.
On April 3, 2008, Respondent submitted an email in Korean that objected to proceeding in English and that also responded to the merits of the Complaint.
On April 7, 2008, the Panel issued Procedural Order No. 1, which (1) stated that the proceedings would be conducted in English, but submissions would be accepted in either English or Korean; (2) stated that Respondent’s email of April 3, 2008 was untimely but would be considered because the Panel was requesting certain additional information; and (3) requested the parties to provide the following information.
As to Complainant, Procedural Order No. 1 requested comments and evidence regarding:
(a) whether Complainant was using “TCN” commercially before the Domain Name was registered on August 10, 2000, and if not, the significance of this fact, if any, to whether the three elements of the Paragraph 4(a) of the Policy have been met;
(b) when Complainant changed its name from TCN Broadcasting to TCN, Inc.; and
(c) any evidence that the Domain Name housed a website that indicated that the Domain Name was for sale.
As to Respondent, Procedural Order No. 1 requested comments and evidence regarding:
(a) whether the Domain Name was initially registered to First Corp as of November 9, 2000, and then transferred to Respondent on April 29, 2003, and if so, the relationship between First Corp and Respondent, if any;
(b) the meaning, if any, of “TCN”, as used in any website operated by Respondent at “www.tcn.com” before the Complaint was filed, and the date that any such website first became operational;
(c) a complete copy of the Korean district court judgment regarding <mbf.com>, and an explanation of the current status of any appeal and related decisions; and
(d) the relationship between Respondent and Han Jin Go, the party that filed the Korean district court lawsuit involving <mbf.com>, which relates to the decision in DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks, WIPO Case No. D2006-0450 (June 12, 2006).
On April 17, 2008, Complainant filed an English-language response to Procedural Order No. 1. On April 29, 2008, Respondent filed a Korean-language response to Procedural Order No. 1.
4. Factual Background
Complainant TCN, Inc. provides voice broadcasting using an Internet-based interactive voice messaging dialer, which enables one phone to deliver up to 50,000 messages per hour. TCN, Inc. was incorporated in July 2003, and previously conducted business as TCN Broadcasting, TCN Communications, and TCN Voice Broadcasting. Since 2001, TCN has operated a commercial website at “www.tcnbroadcasting.com”.
It appears that an entity called First Corp first registered the disputed Domain Name on August 10, 2000. As of April 29, 2003, the Domain Name was registered in the name of an entity called 3v Corporation, with Registrar DOTFORCE CORP. D/B/A DOTFORCE.com. The disputed Domain Name is currently registered with Registrar CyDentity, in the name of Respondent 3v Networks. Thus, there were at least three different registered owners of the Domain Name: First Corp, 3v Corporation, and then Respondent 3v Networks. The Domain Name was apparently transferred from First Corp to 3v Corporation on or before April 29, 2003. The record does not show the date when it was transferred from 3v Corporation to Respondent 3v Networks.
The “www.tcn.com” website currently displays Korean-language content for a website called “Tong Keun Network”. Printouts submitted by Complainant show that the Domain Name was previously used to house various English-language websites, including domain forward websites and link sites, as well as a site stating that the Domain Name was for sale. The subject matter of the linked commercial websites appears to have included shopping, chat rooms, and dating services.
5. Parties’ Contentions
Complainant states that it is a United States communications company founded in 1998, and provides voice broadcasting over the internet using Voice Over Internet Protocol technology. Complainant’s current website is located at domain name <tcnbroadcasting.com>. Complainant has registered various other domain names incorporating the “TCN” mark, including <tcnws.com> and <mytcn.com>.
Complainant asserts that it has used the “TCN” mark since 1998 to identify the source of its web-based broadcasting technology and services, and that it has used the mark worldwide since at least 2001 when it began operating its website at “www.tcnbroadcasting.com”. Complainant states that it serves over 1,000 corporate customers in the United States of America and Canada.
Complainant states that it “owns” a trademark filing for “TCN” with the United States Patent & Trademark Office. Complainant further states that because of the widespread use of “TCN”, it has established considerable goodwill and strong reputation in the mark, as evidenced by its approximately US $8.5 million per year in revenue. Complainant contends that the “TCN” mark is now famous, citing customer testimonials from 2002 and early 2003 annexed to the Complaint. Consequently, Complainant asserts that it has acquired common law trademark rights in the “TCN” mark.
Complainant contends that for the purpose of the Policy, Respondent’s registration of the Domain Name should be deemed to have occurred on April 29, 2003, which is the date when the registration was transferred from First Corp to 3v Corporation. Complainant contends that this registration took place after Complainant launched its website in 2001 and developed rights in the “TCN” trademark. Complainant asserts that Respondent is not entitled to the benefit of the earlier registration by First Corp. On the other hand, Complainant has assumed that Respondent is entitled to the benefit of 3v Corporation’s registration, and has not submitted any evidence or argument regarding the transfer of the registration from 3v Corporation to Respondent 3v Networks.
Complainant states that it contacted Respondent via e-mail in late 2006 to inquire as to the status of the Domain Name. The English language e-mails exchanged by Complainant and Respondent are annexed to the Complaint. Complainant offered to buy the Domain Name for US $10,000, and then for $12,000. Respondent, in contrast, offered to sell the Domain Name for US $225,000, and later decreased this amount to $120,000, and then to $80,000.
Complainant states that it retained counsel who sent a letter to Respondent on December 20, 2007, regarding Complainant’s rights and Respondent’s actions. Complainant asserts that Respondent never replied, and that it was only after this letter was sent that Respondent began displaying a Korean language news site at the Domain Name. Complainant submitted archived screenshots of <tcn.com> from as late as December 5, 2007 to support this contention.
Complainant’s response to the Panel’s Procedural Order No. 1 states that Complainant has used “TCN” since it was established in 1998, and that it has been using “TCN” commercially since launching its website in 2001. Complainant also noted that it was incorporated as TCN, Inc., on July 22, 2003, and that it previously used several other names, including TCN Broadcasting, TCN Communications, and TCN Voice Broadcasting.
In addition, Complainant’s response included website printouts showing that the Domain Name was used to house a website offering the Domain Name for sale in 2001 and 2002.
Complainant has requested a decision requiring the Registrar to transfer the Domain Name <tcn.com> to Complainant pursuant to Paragraph 4(i) of the Policy. Complainant asserts that Respondent’s use of the Domain Name satisfies the standard established in Paragraph 4(a) of the Policy because (1) the Domain Name is confusingly similar to Complainant’s TCN trademark; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.
In its email of April 3, 2008, Respondent asserts that (1) Respondent registered the Domain Name in August 2000, which was several months before Complainant registered <tcnbroadcasting.com> in January 2001; (2) TCN Broadcasting is not well-known in other countries, especially in Korea; (3) when Respondent registered the Domain Name in August 2000, Respondent did not know that TCN Broadcasting would be established five months later; and (4) the “www.tcn.com” website has no connection with Complainant’s business and is not causing any harm to Complainant, hence, the Domain Name is not being used in bad faith. Respondent also states that it is operating a “www.tcn.kr” website that forwards users to “www.tcn.com”, and rhetorically asks if <tcn.kr> should also be transferred to Complainant. Finally, Respondent notes that it filed a lawsuit in Korean court challenging the WIPO UDRP decision regarding <mbf.com>, which was one of several disputes involving domain names owned by Respondent that Complainant had referred to in its Complaint. Respondent states that the Korean district court ruled in its favor, as evidenced by the first page of a judgment.
Respondent’s response to Procedural Order No. 1 identifies its principal as Mr. Han Jin Go, who then makes various arguments on behalf of Respondent. Mr. Go states that he operates over 150 news and news-related websites, and is engaged in an internet-based business relating to the development and management of news and web solutions. Mr. Go also states that he previously managed the home page of the current President of Korea, before the recent election.
Mr. Go further asserts that as a three-letter domain name, the Domain Name <tcn.com> has “infinite” value. Mr. Go claims that he originally planned to use the Domain Name as a website whose content would be voluntarily contributed by users, similar to <myspace.com> or <youtube.com>. After experiencing financial difficulties, however, these plans changed, and <tcn.com> is now a news-related website. Mr. Go states that “TCN” means “Tong Keun Network” in Korean.
Mr. Go asserts that Complainant does not have valid trademark rights in “TCN”, as it does not own the <tcn.com> Domain Name. Mr. Go asserts that he was unaware of Complainant’s existence when the Domain Name was first registered on August 10, 2000. Mr. Go argues that the action brought by Complainant is an attempt to reverse-hijack the Domain Name.
Mr. Go does not dispute that the Domain Name was registered in 2000 by “First Corp”, and that the registration was later transferred to Respondent 3v Networks. However, Mr. Go asserts that Respondent is entitled to the benefit of First Corp’s registration in 2000, because both First Corp and Respondent are controlled by Mr. Go, as evidenced by the fact that both registrations listed Mr. Go’s wife, Ms. Hyun Mi Lee, as the contact person. Mr. Go has submitted a marriage certificate, but has not submitted other evidence of the corporate status or relationship between First Corp and 3v Networks, or an explanation of why the registration was transferred.
6. Discussion and Findings
The Panel has reviewed the record, including the parties’ original submissions as well as their supplemental responses to Procedural Order No. 1. The Panel finds that it was properly constituted pursuant to the Rules and that it has jurisdiction to decide this dispute. 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.
A. Language of the Proceeding
As noted above, the Panel determined in Procedural Order No. 1 that the proceedings would be conducted in English, but submissions would be accepted in either English or Korean. The reasons for this decision were stated in Procedural Order No. 1. However, because Respondent has continued to object to proceeding in English, these reasons are summarized below.
Under Paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the Panel determines otherwise. Since the Registrar CyDentity has confirmed that the Registration Agreement is in Korean, the language of this proceeding should be Korean unless the Panel decides otherwise.
Despite Respondent’s assertion to the contrary, the record shows that Respondent is able to understand and communicate in English. Complainant has submitted screen shots showing that the Domain Name housed various English-language websites before this Complaint was filed. Complainant has also submitted a series of English-language emails between Complainant and Respondent regarding the sale of the Domain Name (Annex R to the Complaint). For example, Respondent’s Director/Business Development, Richard Kim, stated as follows:
“Thank you for your inquiry regarding the domain name http://www.tcn.com. 3v networks, Inc. is an industry leading internet company which is based in korea. For a successful business on the Internet, valuable domain names are very important. we can sell tcn.com to your company for $225,000 USD (225 K) because we have received stable offers for tcn.com from other international companies…”
Another representative of Respondent (identified as John Lee, Director/Business Development) exchanged other English-language emails with Complainant, offering to sell the Domain Name at prices between US $80,000 and $120,000.
The Panel also notes that Respondent’s Korean-language email to the Center of April 3, 2008, commented on the merits of Complainant’s English-language Complaint. In addition, Respondent’s supplemental response, submitted in Korean, responds to the issues raised in both the Complaint and in Procedural Order No. 1, further demonstrating that Respondent is able to understand English language documents. Complainant, in contrast, has stated that it does not understand Korean, but does not oppose allowing Respondent to submit communications in Korean.
Accordingly, the Panel has determined that it will conduct the proceedings in English, but will accept submissions from the parties in either English or Korean. See BPU BANCA- Banche Popolari Unite S.C.P.A. and Banca Lombarda e Piemontese S.p.A. v. webmaster, WIPO Case No. D2007-0486 (May 25, 2007) (finding that where the language of the registration agreement was Korean, but communications between the parties had been conducted in English, it was in the interest of fairness to conduct the proceeding in English on the condition that respondent be permitted to submit any documents or assertions in Korean); Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 (November 13, 2003) (accepting respondent’s submissions in Korean in an English language proceeding).
B. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Pursuant to Paragraph 4(a) of the Policy, a domain name may be cancelled or transferred to Complainant where the three elements below are satisfied. The burden of proof is on Complainant.
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Transfer or cancellation of the domain name is the sole remedy provided to Complainant under the Policy, as described in Paragraph 4(i).
C. Identical or Confusingly Similar
To satisfy this element, the Panel must find that (1) Complainant has demonstrated its rights in the TCN mark; and (2) the disputed Domain Name is identical or confusingly similar to Complainant’s mark.
1. Complainant’s Rights in the TCN mark
With respect to the first condition, Complainant asserts that it “is the owner of a trademark filing” for “TCN” in the United States of America. However, the “filing” Complainant refers to is merely an application, filed on December 20, 2007, scarcely more than a month before the filing of the Complaint in these proceedings. The application remains pending at the time of this decision, and would not confer any enforceable rights unless and until it results in a formal registration. See Amsec Enterprises L.C. v. Sharon McCall, WIPO Case No. D2001-0083.
Lack of a registered trademark is not fatal to the Complaint, however. Complainant argues that it has established common law rights in the “TCN” mark. Common law trademark rights in unregistered marks in a country may properly form the basis for a complaint. See, e.g., The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516 (Aug. 14, 2006). Under U.S. law, the country of Complainant’s residence and primary place of business, common law rights in a trademark or service mark may be established by continuous use sufficient to identify the particular goods or services in the mind of the consumer as those of the trademark owner. Id.
Complainant has presented evidence that it has engaged in business since 1998; that it has used the domain name <tcnbroadcasting.com> to house its company website since 2001; and that it generates annual revenues of US $8.5 million. Complainant has also submitted letters from customers from 2002 and 2003, which show that customers associate the “TCN” mark with Complainant’s products and services. This evidence establishes that Complainant engaged in sufficient continuous use of the “TCN” mark in commerce to confer common law rights in this mark as of 2002, but is not sufficient to establish such rights before 2002.
Complainant asserts that the foregoing evidence shows that “TCN” mark has become a famous “mark”. The Panel finds that the evidence is not sufficient to elevate the mark to “famous” status, but also finds that this is not critical as ownership of a famous mark is not required to invoke the protections of the Policy. Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786 (Nov. 12, 2002).
Respondent offers evidence that there are numerous companies worldwide doing business in several different fields as some variant of “TCN”, and argues that Complainant is not well-known in the Republic of Korea. These facts might support a competing claim of trademark rights in “TCN” by one of those other companies, but do not help Respondent as it is not one of those other companies.
Respondent has also asserted that it registered the Domain Name in August 2000, before Complainant launched its “www.tcnbroadcasting.com” website in 2001. However, the first element of the Policy does not require the Complainant’s trademark rights to pre-date the registration of the Domain Name; rather, it is sufficient for the Complainant to have valid trademark rights when the Complaint is filed. The relative timing of the trademark rights and Domain Name registration may be relevant to the other elements, but that is a separate issue discussed below. The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516 (Aug. 14, 2006). Accordingly, Complainant has established sufficient rights in the “TCN” mark.
2. Identical or Confusingly Similar
With respect to the second condition, it is well-established that adding a top-level identifier of a domain name such as “.com” or “.org” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, e.g., Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585. Here, the <tcn.com> Domain Name is identical to Complainant’s TCN mark, with the legally insignificant addition of the top level identifier “.com”.
Accordingly, the Panel finds the Domain Name identical and confusingly similar to a mark in which Complainant has rights.
D. Rights or Legitimate Interests
To meet the second element, Complainant should make at least a prima facie showing that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent must then present evidence of its rights or legitimate interests to rebut Complainant’s prima facie showing. See, e.g., Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043, para. 6.9 (March 4, 2005) (“While not shifting the ultimate burden of proof, [Complainant’s] assertions make it incumbent on Respondent to come forward with evidence … establishing Respondent’s rights or interests in the disputed domain name.”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, para. 6(B) (April 14, 2004) (requiring Complainant to make more than a prima facie showing would impose “the impossible task of proving the negative”, as much information about the Respondent’s rights and interests is “peculiarly within the knowledge of the Respondent.”).
Complainant states that Respondent is not a licensee of Complainant, and that Complainant has not authorized Respondent to use the TCN mark in any form. Complainant contends that Respondent is merely a “cybersquatter” warehousing domain names for future sale, and as such is not making a legitimate non-commercial use of the disputed domain name. Complainant argues that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor is Respondent using the Domain Name for a legitimate non-commercial purpose.
Respondent argues that it is making a legitimate use of the Domain Name to house a news website, one of 150 it operates. Complainant has submitted evidence, however, that, beginning in 2001 and continuing as late as December 5, 2007, the Domain Name was being used to house a variety of link sites, including a site that offered the Domain Name for sale. It appears that Respondent did not begin to use the Domain Name to host a news website until late December 2007, which was after Complainant sent a demand letter to Respondent and shortly before the institution of these proceedings.
Procedural Order No. 1 requested Respondent to explain the meaning of “TCN” as used by any website operated by Respondent before the Complaint was filed. Respondent replied that “TCN” stands for “Tong Keun Network”, which is the current Korean-language name of its website, but failed to state when it began operating this website. In fact, it appears that Respondent did not begin this current usage until after it received a demand letter from Complainant in December 2007, and probably not until after the Complaint was filed. Thus, the current usage of the Domain Name appears to be an after-the-fact attempt to create a “legitimate interest” in using “TCN”.
Respondent also asserts that the Domain Name is a three-letter combination of “infinite value”. This explanation appears to be closer to the real reason that Respondent registered the Domain Name. The record indicates that Respondent has a practice of registering short domain names, such as “TCN” and “MBF”, and then attempting to sell such domain names for very high prices. See DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks, WIPO Case No. D2006-0450 (June 12, 2006) (ordering transfer of the “MBF” domain name, which Respondent attempted to sell for US $275,000). Complainant has presented undisputed evidence that Respondent offered to sell the Domain Name to Complainant for US $225,000, and that the Domain Name previously housed a website that offered the Domain Name for sale.
This evidence suggests that Respondent is in the business of registering short domain names for future sale at high prices that far exceed the cost of registering and maintaining a domain name. The evidence also indicates that little if any use was made of the Domain Name before Complainant sent a demand letter to Respondent at the end of 2007. Under these circumstances, a reasonable argument could be made that registering short domain names for the purpose of selling them at high prices does not constitute a legitimate interest under the Policy, as domain names are intended to be used, and not hoarded and then sold for windfall profits, especially for exorbitant amounts in the hundreds of thousands of dollars.
The Panel notes, however, that other panels that have considered similar issues have held that registering domain names for the purpose of selling them at high prices is not illegitimate per se, but may be illegitimate when combined with other evidence indicating bad faith. A recent and well-reasoned analysis of this issue is contained in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (September 23, 2006), which is a decision that Complainant has cited. The Media General case involved the domain name, <wcmh.com>, which the complainant had registered as a trademark for a television station long before the respondent registered the domain name. After reviewing a number of prior decisions, the panel in Media General concluded that “reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy, but not in all instances”. Id. The panel then identified various factors relevant to whether such practices are likely to be deemed to be legitimate, including:
- whether the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
- whether the respondent makes good faith efforts to avoid registering and domain names that are confusingly similar to marks held by others;
- whether the domain name is a “dictionary word” or a generic or descriptive phrase;
- whether the domain name is not identical or confusingly similar to a famous or distinctive trademark;
- whether there is evidence that respondent had actual knowledge of the complainant’s mark.
The panel in Media General noted that the record showed that the respondent was in the business of reselling domain names and using them, at least in the interim, to point to websites with advertising links. The panel further noted that the domain name at issue, <wcmh.com>, was not a dictionary word or descriptive, but was rather a short string of letters that was suspiciously identical to the complainant’s arbitrary mark. The panel then noted that the critical issue was that of bad faith, which was better addressed in connection with the third element of the Policy. If the respondent acted in bad faith by registering and using a non-generic domain name that it should have realized was likely to correspond to a trademark, then the respondent had no legitimate interest in this particular domain name. Conversely, if the respondent acted in good faith in registering and using the disputed domain name, then the complainant could not show that the respondent lacked a legitimate interest. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (September 23, 2006).
This Panel agrees with and follows the test set forth in Media General. Here, as in Media General, Respondent appears to have registered the Domain Name for its inherent value as a short series of letters, with the hope of selling the Domain Name in the future. Whether this was a legitimate interest under the second element of the Policy depends largely on whether Respondent was acting in good faith or in bad faith under the third element. Accordingly, the Panel turns to the dispositive issue of whether Complainant has established that the Domain Name was registered and used in bad faith.
E. Registered and Used in Bad Faith
To establish the third element, Complainant must demonstrate pursuant to Paragraph 4(a)(iii) of the Policy that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances that may show bad faith, including registrations made (i) primarily for the purpose of selling, renting, or transferring the domain name to a complainant (who owns the relevant trademark or service mark) or a complainant’s competitor; (ii) to prevent the trademark or service mark owner from reflecting the mark in a corresponding domain name, where Respondent has engaged in a pattern of such conduct; (iii) primarily for disrupting a competitor’s business; or (iv) to attract Internet users intentionally and for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location, or an offered product or service. See Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582 (Jan. 14, 2008).
Because the Policy requires a showing that the Domain Name was both registered and used in bad faith, it is important to determine when the Domain Name was registered for the purpose of this showing. Respondent contends that the Domain Name should be deemed to have been registered in August 2000, because it was registered at that time by a related entity called “First Corp”. Complainant, in contrast, contends that the Domain Name should be deemed to have been registered in April 2003, when it was transferred to 3v Corporation, which Complainant has treated as the predecessor to Respondent 3v Networks. The difference in registration date is potentially significant, because Complainant did not launch an operational website until 2001, and has not established common law trademark rights until 2002.
The Panel finds that the Domain Name should be deemed to have been registered in April 2003, because Respondent has not established that Respondent 3v Networks is merely the same company as First Corp with a new name, or otherwise the legal successor in interest. Respondent has argued that its registration should be deemed effective as of 2000, because both First Corp and Respondent are controlled by Mr. Han Jin Go, as evidenced by the fact that the contact person listed in the Whois for both companies was Ms. Hyun Mi Lee, who is Mr. Go’s wife. However, even if these factual allegations were accepted, common control of two corporate entities does not establish that one entity is the legal successor to the other. Prior decisions have held that a transfer and re-registration between related parties is still considered a new registration for purposes of this analysis. See, e.g., Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016 (February 25, 2004) (transfer of domain name registration to respondent company from its managing director constitutes a new registration for the purpose of the analysis of bad faith); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (June 4, 2002) (noting that the consensus view among WIPO UDRP panelists is that transfer to a third party amounts to a new registration).
The Panel finds that whether the Domain Name was registered in bad faith in April 2003 presents a close question. On the one hand, the emails exchanged in 2006 show that Respondent offered to sell the Domain Name to Complainant for US $225,000, an amount greatly in excess of the registration costs. Moreover, Respondent has registered at least two other short domain names and then offered to sell those names for a high price. DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks, WIPO Case No. D2006-0450 (June 12, 2006) (transferring <mbf.com> domain name, which Respondent 3vNetworks offered to sell to complainant for US $275,000);1 see IFIL S.p.A. v. Han Jin Go, WIPO Case No. D2007-0535 (Aug. 15, 2007) (transferring <ifil.com> domain name, which respondent’s predecessor, 3v Networks, offered to sell to complainant for a substantial sum).2 See also Editora Globo S/A v. 3V Networks, WIPO Case No. D2006-0367 (May 22, 2006) (transferring <editoraglobo.com> registered by 3v Networks). In addition, as noted in DaimlerChrysler AG, the WhoIs register shows that Respondent has registered other domain names that are confusingly similar to well-known names, such as misspellings of “Harry Potter” and domain names that include “UNICEF”. DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks, WIPO Case No. D2006-0450 (June 12, 2006)
On the other hand, neither “TCN” nor Complainant’s company are as famous as “Harry Potter” or “UNICEF”. Although Complainant has submitted evidence that certain customers associate “TCN” with Complainant’s services, that recognition appears to be limited to certain customers in a particular industry and geographic area.
In addition, the record does not contain sufficient evidence to establish bad faith under any of the four examples set forth in Paragraph 4(b) of the Policy. Although Respondent appears to be in the business of selling domain names, the record does not establish that Respondent registered the Domain Name “primarily” for the purpose of selling it to Complainant or a competitor of Complainant, or for the purpose of preventing Complainant from reflecting its trademark in a corresponding domain name. The record also does not show that Respondent has sought to disrupt Complainant’s business or to profit from the confusion of users who are attempting to find Complainant’s website. The Panel notes in this regard that none of the websites housed at the Domain Name focus on services or links that are similar to the voice broadcasting services offered by Complainant, and thus those websites do not appear to target users looking for Complainant’s website.
As noted in Media General, the examples of bad faith in Paragraph 4(b) of the Policy are explicitly non-exclusive. Bad faith may be shown by other evidence, such as evidence that respondent failed to use good faith efforts to avoid registering and using domain names corresponding to trademarks owned by others. The Media General panel concluded that the record in that case showed that the respondent had failed to use such good faith efforts, because (1) “WCMH” was an arbitrary string of letters, and not a dictionary word or descriptive term; (2) the respondent, which was based in the United States, should have known that three and four letter strings beginning with “W” are commonly used as call signals for licensed radio and television stations in the United States, and thus should have checked if “WCMH” was being used by a radio or television station; and (3) complainant had obtained a registered trademark long before respondent registered the domain name, and thus the respondent could have easily determined that the domain name would conflict with complainant’s registered trademark rights. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (September 23, 2006),
The Panel adopts the general analysis set forth in Media General, but concludes that this leads to a different result here because of differences in the pertinent facts. Similar to Media General, the Domain Name in this case is a short string of letters, which is not a dictionary word or descriptive term. However, “TCN” is somewhat less arbitrary than “WCMH”, because it is only three letters instead of four, and consists of letters that are more likely to be an abbreviation for a descriptive phrase. For example, “t” can stand for “The”, and “n” can stand for “Network”, so “TCN” could stand for any phrase consisting of “The C_____ Network”, such as “The Cartoon Network”, “The Christian Network”, or “The Communications Network”. It could also be an abbreviation for “TeleCommunications Network”, which relates to the services offered by Complainant.
More importantly, the record does not support a finding that Respondent knew or should have known that Complainant had trademark rights in “TCN” when Respondent registered the Domain Name in April 2003. The Media General decision emphasized that the United States respondent should have realized that United States television and radio stations commonly use a series of four letters beginning with “W”, and could have easily found complainant’s registered trademark. Here, in contrast, although “TCN” might be the name of a broadcasting station in various countries, it does not begin with a letter such as “W” that is frequently used for this purpose in the United States. Further, Complainant did not have a registered trademark in 2003 (or even today), and thus Respondent could not have easily determined that Complainant had rights in the “TCN” mark. In addition, Complainant is not a famous company that would likely be known in other countries such as the Republic of Korea.
Complainant did launch its website in 2001, so Respondent could have found Complainant’s website through an Internet search for “TCN”. However, Complainant’s website was in the name of “TCN Broadcasting” (and not “TCN”), and was under the domain name <tcnbroadcasting.com>. Although the Panel has concluded that Complainant had unregistered, common law rights in “TCN” from 2002, this conclusion was based on letters from customers that Complainant submitted in this proceeding. There is no evidence that Respondent knew or should have known about these letters from customers or that Complainant had unregistered rights in “TCN”.
Finally, although the record shows that Respondent offered to sell the Domain Name to Complainant at a high price in late 2006, the first contact was made by Complainant, and not by Respondent. There is no evidence that Respondent was aware of Complainant before this contact.
In sum, the record indicates that Respondent has a practice of registering short domain names that are likely to be of interest to other companies, and then attempting to sell such domain names to others at very high prices. The Panel does not condone this practice. However, Complainant has failed to establish that Respondent registered the Domain Name in bad faith in April 2003, because (1) TCN is a short series of letters that could be an abbreviation for various terms, and which thus could be registered primarily for its inherent value as a short domain name; and (2) there is no evidence that Respondent knew or reasonably should have known that Complainant had unregistered, common law rights in TCN in April 2003.
Accordingly, the Panel finds that Complainant has not satisfied the third element of the Policy. In addition, because the second element of the Policy is closely linked to the third element under the circumstances of this case, the Panel finds that Complainant has also not satisfied the second element of the Policy.
7. Reverse Domain Name Hijacking
The Rules define reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. As discussed above, the Complaint presents a close question as to whether transfer is appropriate. Although the Panel has concluded that the requirements for transfer have not been met, Complainant had a reasonable basis for filing the Complaint and was not proceeding in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies Complainant’s request that the Domain Name, <tcn.com> be transferred to the Complainant. In addition, Respondent’s claim of reverse domain name hijacking is rejected.
Grant L. Kim
Dated: June 4, 2008
1Respondent argues that the decision in DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks, WIPO Case No. D2006-0450 (June 12, 2006), should not be considered because a Korean district court declined to transfer the domain name in that case. However, the Korean district court did not address whether there was sufficient evidence of bad faith under the third element of the Policy; rather, it based its decision solely on its finding that the complainant failed to establish trademark rights in the disputed domain name that were sufficient to satisfy the first element. As discussed above, the Panel finds that Complainant has presented sufficient evidence to establish common law rights in TCN under U.S. law. Therefore, the ruling of the Korean district court is distinguishable and does not apply here.
2The respondent in IFIL S.p.A. v. Han Jin Go, WIPO Case No. D2007-0535 (August 15, 2007), was Mr. Han Jin Go, who stated in his response to Procedural Order No. 1 in this case that he is the principal of Respondent 3v Networks. The IFIL decision describes 3v Networks as a former, bankrupt company owned by Mr. Go. The parties in this case have not presented any evidence or argument regarding whether 3v Networks is bankrupt, so the Panel does not address the impact, if any, of this bankruptcy. The Panel notes, however, that if 3v Networks is indeed bankrupt, there may be an issue as to whether the registration should be transferred and, if so, the impact of any such transfer.