Television
Broadcasts Ltd. v. Tony Lee
Claim Number: FA0111000102523
PARTIES
The Complainant is Television Broadcasts Ltd., Kowloon, HONG KONG (“Complainant”). The Respondent is Tony Lee, Kuala Lumpur, MALAYSIA (“Respondent”) represented by Stanley Chang of Stanley Chang & Partners.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <tvbs.tv>, registered with The .tv Corporation.
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.
Alan L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 23, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.
On December 3, 2001, The .tv Corporation confirmed by e-mail to the Forum that the domain name <tvbs.tv> is registered with The .tv Corporation and that the Respondent is the current registrant of the name. The .tv Corporation has verified that Respondent is bound by the The .tv Corporation 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 4, 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@tvbs.com by e-mail.
A timely Response was received and determined to be complete on January 15, 2002.
Complainant’s Additional Submission was received on January 19, 2002.
Respondent’s Additional Submission was received on January 24, 2002.
On
January 28, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed Alan L. Limbury as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has operated a television station in Hong Kong since 1967 and, since 1993, a joint venture cable TV station in Taiwan known as TVBS, which stands for TVB Super Channel. Since 1995, TVBS programmes have been delivered to viewers outside Taiwan and, since October 1999, a satellite service known as TVBS Asia has been available to viewers in Singapore, Malaysia, New Zealand, Philippines, Indonesia and North America
The disputed domain name, registered on June 1, 2000, is identical to the Complainant’s trademark TVBS, which is well-known world wide, in particular among the Chinese communities, and is registered in several countries, including Malaysia, where the Respondent resides. The Respondent should have learnt about the Complainant’s trademark before registering the disputed domain name. The Respondent is not known by the disputed domain name and has not used it. He should be considered as having no rights to or legitimate interests in the disputed domain name.
By registering the disputed domain name, the Respondent may have the intention to attempt and has the ability to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
B. Respondent
The mark TVBS is registered in Malaysia only in stylized form and not as a word. The applications to register the word alone were not found to be in order. Although the disputed domain name appears similar to the Complainant’s trademark TVBS, there is nothing independently famous about that mark. Others have registered the domain names <ktvb.net>, <tvbs.com> and <tvbs.net>. The Complainant is more commonly known as TVB or TVBS-Asia and not merely TVBS by itself, as evidenced by the Complainant’s web site <www.tvb.com>. There cannot be said to be any confusion because the Complainant’s mark is not famous worldwide and is of a generic nature since there are many other similar domain names.
The Respondent, Tony Lee, is a director of a company manufacturing smart cards and in developing smart card technology. He purchased the disputed domain name registration through a two-week bidding process conducted by the Registrar. The name ‘tvbs’ had been created by the Respondent as an acronyn for “Tony’s Venture Business Systems’ and registration was made under the ‘tv’ domain to stand as an acronym for ‘Technology Venture’. See THQ Inc. v. Hamid Ramezany, FA96853 Nat. Arb. Forum Apr. 30, 2001) in which the domain name holder was found to have a legitimate interest in the domain name, having established that it was an acronym of his business name. On a similar basis, the Respondent has a legitimate interest in the disputed domain name <tvbs.tv>, on which he has expended much of his time and ideas.
The domain name was created and acquired by the Respondent, as a venture capitalist with the idea to undertake, develop and integrate the new and latest technology available in the worldwide market and with the view of expanding his business in time from his base in Malaysia by working in tandem and correlation with the other companies in which he is a director and shareholder. The web site for the disputed domain name is, however, currently dormant as plans to start and develop the business have been kept in abeyance, in view of the recent spate of events affecting dot.com companies wherein the bubble has burst and the Respondent is now waiting for a feasible time to launch and pursue his venture.
Although use of the disputed domain name in connection with a bona fide offering of goods or services has not commenced, the Respondent does have the intention to use the domain name in future in connection with a bona fide offering of goods and services and thus, has shown a legitimate interest under the Policy. See Channel D Corp. v. Channel D FA 94298 Nat. Arb. Forum Apr. 25, 2000).
The Respondent was unaware of the existence, trade name use, trademark registration or domain name of the Complainant before the Respondent registered the disputed domain name.
As explained, no use is being made of the disputed domain name. The Complainant has failed to prove both bad faith registration and bad faith use: Telaxis Communications Corp. v. Minkel D2000-0005 (WIPO Mar. 5, 2000).
The facts here are very similar to those in Toronto Star Newspapers Ltd v. Virtual Dates Inc D2000-1612 (WIPO Feb. 6, 2001) and the Complaint should be dismissed for similar reasons.
The Complainant has failed to discharge the burden of proof. Mere allegations are insufficient: RMO, Inc. v. Burbidge FA 96949 (Nat. Arb. Forum May 16, 2001).
C. Additional Submissions
The trademark applications in Malaysia for the word TVBS are still pending. The mark is registered in various countries. The domain name is identical. The Complainant has established its rights in the TVBS mark through registration and use. It is well known in Malaysia that TVBS is a trademark in relation to the broadcasting service of the Complainant. Usage of the domain name by the Respondent in Malaysia or elsewhere will create confusion for Internet users as to the Complainant’s association with the Respondent’swebsite. See Perot Sys. Corp. v. Perot.net FA 95312 (Nat Arb. Forum Aug. 29, 2000).
The intention of the Respondent to use the domain name in the future does not support his claim to legitimacy. He has no rights to nor legitimate interests in the disputed domain name as he only holds it passively and fails to use it: American Home Products Corp. v. Malgioglio D2000-1602 (WIPO Feb. 19, 2001) and Bloomberg L.P. v. Sandhu FA 96261 (Nat. Arb. Forum Feb. 12, 2001).
TVBS Asia is a 24-hour satellite service available to viewers in Malaysia and has enjoyed great reputation. The Respondent should have known of the Complainant’s mark before he registered the disputed domain name. Constructive knowledge of a well-known mark and passive use are evidence of bad faith registration and use: E. & J. Gallo Winery v. Oak Inv. Group D2000-1213 (WIPO Nov. 12, 2000).
The domain names <tvbs.net> and <tvbs.com> have been ordered transferred to the Complainant in two recent decisions: Television Broadcasts Ltd. v. TVBS Network FA 102517 (Nat Arb. Forum Jan. 17, 2002) (tvbs.net) and Television Broadcasts Ltd. v. TVBS FA 102512(Nat Arb. Forum Jan. 11, 2002) (tvbs.com).
The Complainant has shown, by registration certificates, that it has registered the word mark TVBS in Singapore and Hong Kong (in Part B of the Register, which does not grant exclusive rights) and in Taiwan and China but not in Malaysia or Thailand. The Complainant’s mark is not famous worldwide and the Complainant does not have exclusive rights to the trademark.
The Respondent has shown evidence of demonstrable plans in the making and preparations to use the domain name ‘TVBS’ in his business venture and he is making a legitimate fair use of the domain name. This distinguishes this case from American Home Products Corp. v. Malgioglio D2000-1602(WIPO Feb. 19, 2001), in which there was no Response. Bloomberg L.P. v. Sandhu FA 96261 (Nat. Arb. Forum Feb 12, 2001) is also distinguishable.
The Respondent denies that it has failed to show that he is commonly known by the domain name. <tvbs.tv> is an acronym for Tony’s Business Venture Systems, wherein Tony is the name by which the Respondent is known by his friends and acquaintances.
The Respondent denies that the mark of the Complainant is well-known in Malaysia or that the Complainant has enjoyed great reputation. E. & J. Gallo Winery v. Oak Inv. Group D2000-1213 (WIPO Nov. 12, 2000) is distinguishable on the facts. ‘TVBS Asia’ is a paid channel available only to a selected and limited number of households and viewers in a few countries through cable television and known to a very limited and selective audience in the region of Southeast Asia and not world wide, namely those educated, well-versed and familiar with the Chinese language and who have subscribed to such paid channels. There is no such worldwide recognition of the word ‘tvbs’ as being the Complainant’s mark and the Respondent had no actual knowledge and cannot be deemed to have constructive knowledge of the Complainant’s mark. The Policy does not require a person registering a domain name to carry out worldwide trademark searches: Allocation Network GmbH v. Gregory D2000-0016 (WIPO Mar. 24, 2000).
The Respondent denies that usage of the disputed domain name by the Respondent in Malaysia or elsewhere will create confusion for Internet users as to the Complainant’s association with the Respondent’s website. Perot Sys. Corp. v. Perot.net FA 95312 (Nat. Arb. Forum Aug. 29, 2000) is distinguishable. The Complainant does not own top-level domain sites bearing the word ‘tvbs’, which are held by others at the time of filing the Complaint. The domain name ‘tvbs’ was not intended as bearing any reference to the Complainant’s name or forming part of an abbreviation thereof by the Respondent but was created by the Respondent as an acronym for words which are significant and meaningful to the Respondent.
In Television Broadcasts Ltd. v. TVBS Network FA 102517 (Nat. Arb. Forum Jan 17, 2002) and Television Broadcasts Ltd. v. TVBS FA 102512 (Nat. Arb. Forum Jan. 11, 2002) no Responses were filed and many of the facts found have been disproved in this case, particularly the finding that the Complainant’s name is well-known worldwide. This Panel should make its findings based on the facts as presented in this case and not follow the decisions of the earlier two cases, which were based on the premise of an incomplete presentation of facts and evidence. Further, there are other pending cases, involving the domain names <tvb.tv> and <tvbj.com>, so the earlier cases are not conclusive. The number of cases supports the contention that the TVBS mark is not particularly distinctive, is not world famous and is of a generic nature.
On January 26, 2002, the Complainant submitted an additional submission, after the deadline for submissions and without the required fee. On January 29, 2002, the Respondent submitted a response. The Panel does not admit and has no regard to either of those submissions.
FINDINGS
Since October 1999, a satellite service known as TVBS Asia has been made available by the Complainant to viewers in Malaysia and elsewhere.
The Complainant has registered in Malaysia the mark TVBS in stylized form. Applications to register the word mark TVBS in that country are pending. The Complainant has registered the word mark TVBS in Singapore and Hongkong (in Part B of the Register) and in Taiwan and China.
The Complainant is commonly known as TVBS-Asia.
The Respondent, a resident of Malaysia, is a director of a company manufacturing smart cards and developing smart card technology. He purchased the disputed domain name registration through a two-week bidding process conducted by the Registrar and became the registrant on June 1, 2000. There has been no use of the disputed domain name in connection with a bona fide offering of goods or services.
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 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 Complainant clearly has rights in the trademark TVBS by virtue of its registrations of that word mark in Singapore, Hongkong, Taiwan and China. The disputed domain name is identical to the Complainant’s mark, the ccTLD ‘tv’ being inconsequential.
Further, the disputed domain name is confusingly similar to the Complainant’s mark because the ccTLD ‘tv’ is commonly used to convey a connection with television, the very field of the Complainant’s endeavour.
Rights or
Legitimate Interests
The name TVBS has no inherent meaning. It is an acronym. It is neither descriptive nor generic. Of course, an acronym may stand for more than one combination of words. In the case of the Complainant, it has registered and used the acronym as a trademark to distinguish its television services. The Panel infers that the Complainant has not licensed the Respondent to use its mark nor to register the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The Respondent relies on the circumstances specified in sub-paragraphs 4(c)(i) and (ii):
“(i) before any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering
of goods or services;
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired no trademark or service mark rights”
Even perfunctory preparations have been held to suffice for the purpose of sub-paragraph 4(c)(i): Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution Mar. 20, 2000); Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000) and Royal Bank of Canada v. Xross, AF-0133 (eResolution May 19, 2000).
The Respondent states that he created the disputed domain name to reflect his intention to expand his activities into technology-related ventures; that he chose the acronym TVBS to stand for Tony’s Venture Business Systems and that he chose the ccTLD ‘tv” to reflect ‘Technology Venture’.
Since by its very nature the acronym TVBS is capable of standing for Tony’s Venture Business Systems, the Respondent’s explanation is plausible. To be accepted by this Panel as demonstrating a legitimate interest in the disputed domain name, some proof is required to substantiate the Respondent’s assertion. There is none. Contrary to the Respondent’s submission, the Respondent has not produced any evidence of demonstrable plans in the making of and preparations to use the domain name ‘TVBS’ in his business venture. This omission is at odds with the Respondent’s assertion that he has spent much of his time and ideas in preparing to use the disputed domain name. If true, one would expect there to be some record of the Respondent’s activities or some person capable of attesting to discussions with the Respondent which led to the creation of the domain name as an acronym for the Respondent’s intended venture.
The Respondent’s assertion that he is making a legitimate fair use of the domain name conflicts with his assertion that use of the disputed domain name in connection with a bona fide offering of goods or services has not commenced. Nor is there any evidence to support the Respondent’s assertion that he has the intention to use the domain name in future in connection with a bona fide offering of goods and services.
The Respondent is commonly known as Tony, which is quite different from the disputed domain name.
In the absence of any evidence to support the Respondent’s assertions on this critical issue, the Panel is unable to accept the Respondent’s explanation. The Panel concludes that the Respondent has no right to nor legitimate interest in the disputed domain name. The Complainant has established this element.
Registration and
Use in Bad Faith
There is no evidence of any of the circumstances specified in paragraph 4(b) of the Policy. That paragraph is not exhaustive, however. The point of most contention between the parties is whether the Respondent was aware, or should be deemed to have been aware, of the Complainant’s trademark prior to his registering the disputed domain name.
In resolving this issue, it is not necessary to make a finding that the Complainant’s mark is well-known worldwide. There is no dispute that the Complainant’s satellite television service, TVBS Asia, has been made available to residents of Malaysia since October 1999 and that the disputed domain name was registered on June 1, 2000. As a resident of Malaysia, the Respondent could have become aware of the Complainant’s satellite service during the 7 months preceding his registration of the disputed domain name. The Panel concludes that it is more likely than not that during this period, if not before, the Respondent did become aware of the name TVBS in association with the Complainant’s satellite television service. This conclusion is based upon the availability of the Complainant’s service, upon the likelihood that the Complainant engaged in some promotion of its service in Malaysia during that time and upon the Respondent’s having given an explanation for his choice of the disputed domain name which he has not attempted to substantiate, despite its critical importance to the outcome of this proceeding.
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport FA 94956 (Nat. Arb. Forum July 11, 2000) a finding of bad faith was made where the respondent “knew or should have known” of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot FA94737 (Nat. Arb. Forum June 15, 2000); Canada Inc. v. Sandro Ursino AF-0211 (eResolution July 3, 2000) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com FA95037 (Nat. Arb. Forum July 20, 2000).
Here the Panel has found that the Respondent knew of the Complainant’s trademark TVBS before registering the disputed domain name. In selecting the ‘.tv’ ccTLD, which is commonly associated with television, the Panel finds the Respondent had the Complainant’s television service in mind. The Panel finds that the disputed domain name was registered in bad faith.
As to use, it is
common ground that there has been no use of the disputed domain name in the 18
months prior to the filing of the Complaint. The “use” of a domain name in bad
faith does not necessarily mean use on the Internet: Bayshore Vinyl
Compounds Inc. v. Michael Ross AF-0187 (eResolution July 17, 2000). The ‘use’ requirement has been found not to
require positive action, inaction being within the concept: Telstra Corporation
Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000); Barney’s,
Inc. v. BNY Bulletin Board D2000-0059 (WIPO Apr. 2, 2000); CBS
Broadcasting, Inc. v. Toeppen D2000-0400 (WIPO July 6, 2000); Video
Networks Limited v. King D2000-0487 (WIPO July 20, 2000); Recordati
S.P.A. v. Domain Name Clearing Co. D2000-0194 (WIPO July 21, 2000) and Revlon
Consumer Products Corp. v. Yoram Yosef aka Joe Goldman D2000-0468 (WIPO
July 27, 2000)”.
The Panel finds that, having registered the
disputed domain name with knowledge of the Complainant’s mark; having chosen a
domain name that, if used, is inherently likely to mislead Internauts familiar
with the Complainant’s mark into the mistaken belief that the domain name and
any website at that address is associated with the Complainant; having put
forward an explanation for the selection of the disputed domain name which is
unsupported by any evidence; and having failed to make any active use of the
disputed domain name for 18 months, the Respondent has used the disputed domain
name in bad faith.
The Complainant has established this element.
DECISION
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <tvbs.tv> be transferred to the Complainant.
Alan L Limbury, Panelist
Dated: February 4, 2002
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