Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited v Joe Hyon-chol
Claim Number: FA0711001107033
Complainant is Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited (“Complainant”), represented by Alexandre A. Montagu, 1060 Park Avenue, Suite 10C, New York, NY 10128. Respondent is Joe Hyon-chol (“Respondent”), Taeyoung 103-302 Pungdeokcheon-dong Yongin-si Gyeonggi-do KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue (“Disputed Domain Name”) is <thomsonreuters.com>, registered with Hangang Systems, Inc. d/b/a Doregi.com.
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.
Hong Oo Baak as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On November 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A Response was received on
Complainant filed a timely Additional Submission on December 26, 2007.
Respondent filed a timely Additional Submission
There are three entities named as Complainant in this case: Thomson Canada Limited, Thomson Finance S.A. which are wholly owned by Thomson Corporation (together Thomson Corporation, Thomson Canada Limited and Thomson Finance S.A. shall be referred to as “Thomson”) and Reuters Limited (“Reuters”), a wholly owned subsidiary of the Reuters Group PLC. Multiple entities may proceed as a single entity if the entities involved have established a sufficient nexus among them.
In this case, Thomson and Reuters submitted that a sufficient nexus exists between them, based on the fact that Thomson and Reuters are in the process of merging their businesses and that as the new name of the merged entity, THOMSONREUTERS is one of the most valuable assets of the new post-merger entity. The Panel finds that Thomson and Reuters have established a sufficient nexus.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Thomson is the sole and exclusive owner of a
number of registered trademarks throughout the world, including the
2. Reuters is the sole and exclusive owner of a
number of registered trademarks throughout the world, including the
3. Complainant asserts that the Disputed Domain Name used by Respondent is confusingly similar to the famous Thomson trademark owned by Thomson and to the famous Reuters trademark owned by Reuters individually, as well as to the combined Thomson-Reuters mark which will result from the combination of the two companies after the merger transaction closes, as the Disputed Domain Name incorporates the Thomson and Reuters marks.
4. Complainant asserts that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Complainant asserts that the Disputed Domain Name bears no relationship to the business of Respondent and that Respondent is not commonly known by the Disputed Domain Name and has no relationship with or permission from either Thomson or Reuters for the use of their marks. Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the site contains links to other fashion sites and features commercial descriptions and pictures of fashion products.
5. Complainant asserts that the Disputed Domain Name has been registered and used in bad faith by Respondent as the Respondent registered the Disputed Domain Name on the same day that Reuters announced that it had received an acquisition offer from a third party, which was widely reported to be Thomson. Complainant further asserts that Respondent attempts to generate commercial gain by creating confusion as to the affiliation of its services with the Thomson and Reuters marks.
1. Respondent contends that he was preparing
for fashion business since the beginning of 2007 and that he purchased and
registered the transfer of the Disputed Domain Name from YB Park on
2. Respondent contends that he does have legitimate interest in the Disputed Domain Name as he has been in preparation for fashion business since long ago, and was in operation of, and opened the website using the Disputed Domain Name since long before receiving Complainant’s complaint. Respondent contends that the website at the Disputed Domain Name is in non-commercial operation. Respondent further contends that if Respondent can prove any one of the circumstances as provided for in Policy 4(c), Respondent has legitimate interest, and Respondent contends that all policies from Policy 4(a)(i) to (iii) need to be satisfied for the decision for transfer of the Disputed Domain Name to the Complainant, and since not all of them have been satisfied, the Complainant’s request for transfer of the Disputed Domain Name shall be denied.
3. Respondent contends that there is no likelihood of confusion or misconception with the Complainant as the website using the Disputed Domain Name is in Korean and does not overlap with the business area of the Complainant.
C. Additional Submissions by Complainant
1. Complainant contends that Respondent
acquired and is using the Disputed Domain Name in bad faith as the Thomson brand
and Reuters brand are famous and that Complainant has been actively present in
2. Complainant contends that the Respondent’s use of the Disputed Domain Name causes confusion with, and tarnishes Complainant’s marks, and prevents Complainant from registering their marks in a domain name, and Respondent has engaged in a pattern of such conduct.
3. Complainant contends that Respondent’s cited decisions for the contention that Complainants have not shown bad faith use and registration of the Disputed Domain Name, do not support his position.
4. Complainant contends that Respondent’s contention that Complainant has not proven all three elements of Policy 4(c) is wholly erroneous. Complainant contends that Respondent’s use of the Disputed Domain Name cannot be considered ‘bona fide’ as Respondent is infringing Complainant’s valid trademarks. Complainant further contends that Respondent is making a commercial use of the Disputed Domain Name.
D. Additional Submissions by Respondent
1. Respondent contends that Respondent has not intended any transfer or sale of the Disputed Domain Name and that such will not occur in the future.
2. Respondent further contends that Complainant has not proven Respondent’s bad faith registration and use of the Disputed Domain Name.
1. Thomson is the owner of a number of registered trademarks throughout the world, including the United States (including the Thomson mark owned by Thomson Canada Limited as registration number 1,984,950, issued on July 9, 1996) and Canada, and the principal domain name currently registered by Thomson is <thomson.com>, registered on July 29, 1993.
Reuters is the owner of a number of registered
trademarks throughout the world, including
The Disputed Domain Name was registered on
5. The website operated at the Disputed Domain Name contains links to other fashion sites.
Respondent was registered as the owner of the domain
name <thomsonreuters.co.kr> on
Reuters sent a demand letter dated
8. Respondent’s website at the Disputed Domain Name has a disclaimer which reads: “This site has no relations with Reuters Limited.”
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.
Complainant has submitted evidence demonstrating their rights to Thomson marks and Reuters marks. Corresponding trademark registrations have been obtained in various countries, before the Respondent registered the Disputed Domain Name. Also, the two components of the Disputed Domain Name are identical to the respective marks of Thomson and Reuters. Further, given the public announcement of the merger of Reuters and Thomson, the Disputed Domain Name is very likely to cause confusion with respect to Complainant. See e.g. Konica Corp., Minolta Kabushiki Kaisha v. IC, D2003-0112 (WIPO Mar. 31, 2003); Danisco A/S & Genencor Int’l, Inc. v. Bong-Gyu Jeong, D2005-0973 (WIPO Nov. 17, 2005).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Paragraph 4(c) of the Policy sets out circumstances, without limitation, which can establish the holder’s rights to or legitimate interests in the domain name. These circumstances are as follows.
(i) before any notice to the domain name holder of the dispute, the holder's 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; or
(ii) the domain name holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
that he has been in preparation for fashion business since long ago, and was in
operation of, and opened the website at the Disputed Domain Name since long
before receiving Complainant’s complaint. Even if Respondent’s use of the domain name
before any notice from Complainant is acknowledged, such use does not
constitute bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) if the domain name infringes
a valid trademark. See Ka v. Korenek, D2003-0453 (WIPO July 24, 2003). Also,
using the Disputed Domain Name for redirecting Internet users interested in Complainants’ services to a
website that features links to various fashion sites is not a use in connection
with a bona fide offering of goods
nor a legitimate noncommercial or fair use of the domain name. See
In addition, Complainant contends that Respondent is neither commonly known by the Disputed Domain Name nor licensed to register names using the marks of Complainant. Respondent does not contest this allegation. Therefore, in the absence of evidence suggesting otherwise, Respondent has not established rights to or legitimate interests in the Disputed Domain Name under the Policy ¶ 4(c)(ii).
Also, although Respondent placed a disclaimer on the website at the Disputed Domain Name stating that it is not associated with Reuters, this is of no effect because it does not negate an Internet user’s initial impression that the Disputed Domain Name is associated with Complainant’s marks. See Amazon.com, Inc. v. Object Publ’g Software, FA 1103565 (Nat Arb. Forum Dec. 11, 2007).
While the overall burden of proof for Policy ¶ 4(a)(ii) rests on Complainant, the failure by Respondent to demonstrate that he comes within Paragraph 4(c) can assist the Panel in deciding whether Complainant has discharged the onus of proof. See Wal-Mart Stores, Inc. v. Lars Stock, D2000-0628 (WIPO Aug.11, 2000).
Considering all the statements made and evidence submitted, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s additional submission states that Respondent’s contention that Respondent did not register nor use the Disputed Domain Name in bad faith, and that Complainant repeated mere assertion of bad faith of Respondent’s registration or use of the Disputed Domain Name without proof, is not supported by the decisions cited by Respondent. Respondent, in his additional submission contends that Complainant has not proven Respondent’s registration and use of the Disputed Domain Name in bad faith.
However, the Disputed Domain Name
was registered on the day after Reuters announced that it had received an acquisition
offer from a third party, which was speculated to be Thomson, and the registration of a domain name
immediately after the announcement of the merger plan indicates bad faith. Also, opportunistic registration of the name
or likely name of a new entity to be formed from the merger of two
multinationals is a glaring example of bad faith registration and use. See BPU BANCA – Banche Popolari Unite S.C.P.A. & Banca Lombarda
e Piemontese S.p.A. v. webmaster, D2007-0486 (WIPO May 25, 2007); Konica Corp., Minolta Kabushiki Kaisha v. IC, D2003-0112 (WIPO
Further, Respondent intends to use Complainant’s marks to attract the public to the website without permission from Complainant. This is evidence of registration and use in bad faith. See State Farm Mutual Auto. Ins. Co. v. Northway, FA 95464 (Nat Arb. Forum Oct. 11, 2000).
Also, Complainant’s additional submission outlines that Respondent registered two domain names all identical to names and/or marks belonging to Complainant. This course of conduct is further evidence of Respondent’s bad faith intent and effort to capitalize in some way on Complainant’s goodwill. See Yahoo! INC v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001).
According to the above, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomsonreuters.com> domain name be TRANSFERRED from Respondent to Complainant.
Hong Oo Baak, Panelist
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