DECISION

 

Television Broadcasts Ltd. V. Net-to-Net, Inc.

Claim Number: FA0111000102515

 

PARTIES

The Complainant is Television Broadcasts Ltd., Kowloon, Hong Kong (“Complainant”).  The Respondent is Net-to-Net, Inc., Birmingham, AL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tvbj.com>, registered with Network Solutions.

 

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 Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 23, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.

 

On November 29, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <tvbj.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tvbj.com by e-mail.

 

A timely Response was received and determined to be complete on December 26, 2001.

 

On January 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         The domain name in dispute is identical and confusingly similar to Complainant’s registered trademark and service mark which are registered in Australia (April 15, 1999), New Zealand (November 12, 1999), Singapore (November 7, 1998), and Thailand (October 9, 1998).  The disputed domain name also is identical and confusingly similar to the name of Complainant’s satellite television channel based in Hong Kong serving Australia, New Zealand, Singapore, and Thailand.

 

            2.         Respondent has no rights or a legitimate interest in the disputed domain name.  Complainant in its television broadcasting and related activities is the largest producer of Chinese language programming in the world, and it has distributed its own programs to all the Chinese communities in the world.  Thus, Complainant’s name and marks are known throughout the world, particularly in the Chinese communities, and they should have been known by Respondent.  Respondent has not as yet made use of the disputed domain name and is not commonly known by it.

 

            3.         Complainant believes that Respondent has acted in bad faith because it may have the intention to attempt and does have the ability to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website.

 

B. Respondent

            1.         There is no registered trademark or service mark for the letters “TVBJ” in the United States Patent and Trademark Office database, although, apparently, there is registration of the marks in other countries.  In any event, it is categorically denied that any visitor to the Tennessee Valley’s Business Journal website at <tvbj.com> could be confused to think the site was related to Television Broadcast Limited, a Chinese language television station in Hong Kong operating in Australia, New Zealand, Singapore, and Thailand.

 

            2.         The disputed domain name was registered for the Tennessee Valley Business Journal on November 11, 1999.  the TVBJ Satellite Channel was launched on August 13, 1999.  Respondent could not have known that Complainant’s channel existed in such a short time interval, and was from a location around the world from Respondent.  In fact, Respondent did not know of Complainant’s existence, and the disputed domain name has been in use in Respondent’s subscription area for over a year.

 

            3.         Respondent has not acted in bad faith.  It did not register the disputed domain name primarily for the purpose of selling it.  It did not engage in a pattern of conduct to prevent owners of trademarks or service marks from reflecting them in domain names.  Respondent is not a competitor of Complainant.  Finally, there can be no confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

 

DISCUSSION, FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Alpha and Omega of this domain name dispute are that no reasonable user of the Internet would be confused in thinking that there was some connection between the Tennessee Valley Business Journal, a business newspaper in Northern Alabama, and a Chinese language television station, TVBJ, located in Hong Kong, and broadcasting to Chinese communities in Australia, New Zealand, Singapore, and Thailand, even though Complainant’s products are used for Chinese communities throughout the world (e.g., Los Angeles and Vancouver, B.C.).[1]

 

Rights or Legitimate Interests

It is found and determined that Respondent has rights and legitimate interests in the disputed domain name because the domain name represents the initials of Respondent’s Tennessee Valley Business Journal.[2]  Moreover, the disputed domain name has been used by Respondent in its subscription area for over a year by advertisement, broadcast, and in e-mail addresses.

 

Registration and Use in Bad Faith

We end as we began.  There simply can be no confusion on the part of Internet users under the circumstances here presented.  Respondent’s registration of the disputed domain name was for a fair business purpose, and the lack of any false association by confused Internet users is evidence that Respondent did not register the disputed domain name in bad faith.[3]

 

      It is found and determined that Respondent has not attempted to sell the disputed domain name for profit; has not engaged in a pattern of conduct depriving others of use of their trademarks; is not a competitor of Complainant; and is not diverting Internet users to its domain for commercial gain.[4]

 

DECISION

Based on the above findings and determinations, it is decided that the claim of Complainant to the domain name <tvbj.com> be and the same hereby is denied.

 

 

Judge Irving H. Perluss (Retired), Panelist

 

Dated:  January 16, 2002

 

---