Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited v. kiwon ann
Claim Number: FA0712001116930
Complainant is Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited (collectively, “Complainant”), represented by Alexandre A. Montagu, 1060 Park Avenue, Suite 10C, New York, NY 10128. Respondent is Kiwon Ann (“Respondent”), Sunmo b/d 5f, 44-30, Daebong-dong, Jung-gu, Daegu KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomson-reuters.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2007.
On December 4, 2007, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <thomson-reuters.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that the Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2008 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 timely Response was received and determined to be complete on January 7, 2008.
On January 14, 2008, an Additional Submission from Complainant was received.
On January 21, 2008, an Additional Submission from Respondent was received.
On January 22, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm as Panelist.
Complainant requests that the domain name be transferred from Respondent to ‘Thomson Canada Limited’ and ‘Thomson Finance S.A.’ of Complainant.
i) The disputed domain name is confusingly similar to Complainant’s famous Thomson trademark as well as the famous Reuters trademark.
ii) The Respondent has no rights or legitimate interests in respect of the domain name.
iii) Respondent registered and used the disputed domain name in bad faith.
iv) And thus, the disputed domain name should be transferred to Complainant.
does not have either registered
or common-law rights in the ‘ThomsonReuters’ mark as well as ‘Thomson-Reuters’
mark. Thomson trademark is not a registered mark in
ii) Respondent has rights or legitimate interests in respect of the disputed domain name because he has registered and is in the process of preparation to use the domain name for his non-profit business purposes.
iii) He did not acquire and use the disputed domain name in bad faith. Respondent has never offered the sale of the disputed domain name to Complainant. Respondent has rejected a purchase offer from a third party. Furthermore, he has simply ‘parked’ the disputed domain name. Respondent states that Complainant has failed to prove one of the elements specified in ICANN Policy 4(b) in order to show bad faith.
C. Additional Submissions
Complainant has asserted in the Additional Submission to the effect that:
i) The Respondent’s claim that he was unaware of the famous Thomson and Reuters trademarks, and that he independently coined the term ‘Thomson-Reuters’ is not credible.
ii) Registering a domain name, which incorporates the respective marks of two famous companies immediately following the announcement of a merger constitutes opportunistic bad faith under the ICANN policy.
iii) Unsupported allegation that the disputed domain name was registered for non-profit purpose does not negate a finding of bad faith. Respondent’s failure to use the Infringing Domain for any purpose despite owning it for longer than eight months alone is sufficient to demonstrate his bad faith.
iv) “Parking” the disputed domain name constitutes evidence of bad faith.
v) Respondent’s claimed failure to respond to an offer to sell the disputed domain name does not negate a finding of bad faith.
vi) The elements listed under ICANN Policy 4 (b) are not exclusive for findings of bad faith and the Panel is free to infer bad faith from other situations.
vii) Respondent’s contention that the disputed domain name is not confusingly similar to a trademark in which the Complainant has rights misstates the applicable standard and contradicts established ICANN precedent. The Respondent’s contention that Complainant does not have rights in the THOMSON mark is false.
viii) Nevertheless the Complainant is not required to disprove all three situations listed in ICANN Policy 4(c). Complainant has in fact shown that Respondent cannot establish rights or legitimate interests in the disputed domain name by reference to any of the situations set forth in ICANN Policy 4(c).
ix) Respondent’s contention that this dispute should be reviewed under Korean law is incorrect because the Respondent expressly agreed to submit to, and be bound by, the current administrative proceeding.
Respondent has asserted in the Additional Submission to the effect that:
i) In light of the little amount of annual turnover and advertisement expenditure of each of the Complainant and the fact of the very low use rate of Google search engine in Korea, in which high hits of ‘THOMSON’ and ‘REUTERS’ are claimed by Complainant and the very low hits for Reuters or Thomson in the most used search engine ‘Naver’ in Korea, neither the Thomson mark nor the Reuters mark is well known in Korea.
ii) Respondent contends that this dispute should be reviewed under Korean law, and that ‘even the Respondent is found to infringe the Complainant’s right, he has no obligation to transfer the Domain Name by citing a Korean court case.
iii) Respondent does not have any intent for commercial gain to misleadingly divert the Internet traffic, and the disputed domain name has never influenced the Internet traffic of the Complainant.
iv) The failure to use the disputed domain name is not sufficient to demonstrate Respondent’s bad faith.
v) Respondent states that Complainant has failed to prove one of the elements specified in ICANN Policy 4(a)(iii) in order to show bad faith.
Complainant does not have a trademark registration for the portion ‘Thomson’
vii) Although Complainant contended that Respondent was unlawfully passing off his business as a ‘ThomsonReuters’ business, Respondent has never described his business as a ‘ThomsonReuters’ business.
The Complainant ‘Thomson Canada Limited’ and ‘Thomson
Finance S.A’ (hereinafter referred to as ‘Thomson’) are Global providers of
integrated information-based solutions to business and professional customers.
Thomson Canada Limited owns, in the
In Korea, ‘Thomson Finance S.A’ owns trademark and service mark registrations for the marks ‘THOMSON OPENTRADER’ Reg. No. 60333 in respect of investment information in Class 36, ‘THOMSON LEARNING’ Reg. No. 69555 in respect of educational information in Class 41, ‘THOMSON FINANCIAL’ Reg. No. 113252 in respect of financial information and Internet user connection service in classes 35, 36 and 38, ‘THOMSON PHARMA’ Reg. No. 151873 in respect of pharmaceutical information in Class 44, and a pending application for the mark ‘THOMSON-REUTERS’ in classes 9, 16, 35, 36, 37, 38, 42, 44, and 45.
The Complainant ‘Reuters
Limited’ (hereinafter referred to as ‘Reuters’) is an international news and financial
information service group and international news and television agencies
serving traditional and new media. Reuters owns trademark registrations for ‘REUTERS’
in respect of business services provided online via computer databases Reg. No.
25567 registered on December 30, 1994 and in respect of telecommunication
service in former Korean class 106 (international class 38) Reg. No. 49606 and
Reg. No. 49605 respectively registered on November 19, 1998 in Korea. Reuters
owns the trademark registrations for the same mark in many other countries such
as the United Stated, the
Each of the Complainants has a sufficient nexus to bring the Complaint as required by NAF Supplement Rule 1 from the fact that on May 4, 2007, Reuters announced that it had received a preliminary takeover bid from a third party, which was widely speculated by various well-known news outlets that the third party was Thomson and that in a subsequent joint press-release dated May 8, 2007, the boards of Thomson and Reuters announced that they were in discussion to merge their respective business.
The disputed domain name was registered on May 5, 2007. The Respondent has simply ‘parked’ the disputed domain name.
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.
The Complainant has submitted
evidence demonstrating their rights to the marks THOMSON and REUTERS.
Corresponding trademark registrations have been obtained throughout the world,
A combination mark comprising of more than two words is likely to be abbreviated by one prominent portion unless it is comprised of purely descriptive words in respect of the relevant goods and services. In the disputed domain name <thomson-reuters.com>, the portion ‘.com’ cannot be a distinctive part and thus should not be considered in determining confusing similarity. Each of ‘thomson’ and ‘reuters’ is considered as being a distinctive portion as a trademark, and it is likely to be abbreviated by one of those portions.
When the disputed domain name is abbreviated by the portion ‘reuters’ it is identical with the Reuters mark ‘reuters,’ and thus it is considered as being confusingly similar to the Reuters mark ‘REUTERS’.
When the disputed domain name is abbreviated by the portion ‘thomson,’ it is identical with the Thomson mark ‘THOMSON’ in the United States and its other trademarks such as ‘THOMSON LEARNING’ in respect of educational information in Class 41, ‘THOMSON FINANCIAL’ in respect of financial information and Internet user connection service in classes 35, 36 and 38, ‘THOMSON PHARMA’ where the portions ‘LEARNING’, ‘FINANCIAL’, ‘PHARMA’ in respect of pharmaceutical information in Class 44, etc. are considered indistinctive in relation to their respective designated services, i.e., educational information, financial information, and pharmaceutical information and thus do not have much weight in determining the confusing similarity.
As such, the disputed domain name is considered as being confusingly similar to both of the Reuters trademark ‘Reuters’ in Korea and other countries and Thomson’s trademark ‘THOMSON’ in the United States and other Thomson trademarks incorporating ‘THOMSON’ in Korea.
Moreover, the disputed domain name is merely a combination of the two asserted trademarks in their entireties. Further, given the Implementation Agreement between Thomson and Reuters, the disputed domain name is highly likely to cause confusion with respect to the Complainant. Persons worldwide accessing the disputed domain name would be bound to think that the disputed domain name had a connection with Thomson and Reuters. See Konica Corp., Minolta Kabushiki Kaisha a/k/a Minolta Co., Ltd. v. IC, D2003-0112 (WIPO Mar. 31, 2003) (the domain name <konicaminolta.com>, a mere combination of two separate trademarks, confusingly similar to the asserted trademarks); Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., D2000-0446 (WIPO Aug. 1, 2000); SMS Demag AG v. Seung Gon, Kim, D2000-1434 (WIPO Jan. 19, 2001); Seagate Tech. LLC v. Wang Zhanfeng, FA 635276 (Nat. Arb. Forum Mar. 10, 2006); EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000); Quixtar Invs., Inc. v. Smithberger & QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
Respondent has failed to show he has rights or legitimate interests by establishing that he had a registered or common law based trademark or trade name identical with or similar to the disputed domain name. A mere registration of a domain name does not confer any rights or legitimate interest. And since registration, Respondent has simply parked the disputed domain name, which is not considered as being a bona fide offering of goods or services. The Respondent registered the disputed domain name just one day after Reuters’ first announcement that it had received a preliminary takeover bid from a third party, which was widely speculated by various well-known news outlets that the third party was Thomson. These twofold facts lead this Panel to conclude that Respondent has no rights or legitimate interest in the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000); see also Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., D2000-0446 (WIPO Aug. 1, 2000).
It is recognized that both the
marks THOMSON and REUTERS are well-known marks in
Respondent’s opportunistic bad
faith is obvious. This Panel finds that it represents an ongoing
pattern of opportunistically registering domain names of companies in the news,
preventing those companies from representing their merger in a corresponding domain name. See Time Warner Inc. &
EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that
this very Respondent registered and used the domain names <emiwarnermusic.com>,
<emiwarner.org>, <emiwarner.net>, <warneremi.net> and <warneremi.org>
in bad faith when Respondent registered the domain names immediately after an
announced merger between Time Warner Inc. and EMI Group.); see also Konica Corp., Minolta Kabushiki Kaisha a/k/a Minolta
Co., Ltd. v. IC, D2003-0112 (WIPO Mar. 31, 2003) (providing notes on several similar cases where a cyber-squatter
obtained registration in response to the announcement of a merger or similar
transaction). See also UnitedHealth Group
Inco. v. Webmaster, FA
991993 (Nat. Arb. Forum July 5, 2007); Pharmacia
& Upjohn AR v. Monsantopharmacia.com Inc., D2000-0446 (WIPO Aug. 1,
2000); ABB Asea Brown Boveri Ltd. v.
Aseabrownboveri, D2001-0107 (WIPO April 18, 2001); SMS Demag AG v. Seung Gon Kim, D2000-1434 (WIPO Jan. 19, 2001); A.P. Moller v. Web Society, D2000-0135 (WIPO
April 15, 2000);
Respondent’s disputed domain name all resolves to a website that is blank except for a generic welcome message and picture of a computer as the extent of the
website’s content. Respondent’s
failure to actively use the disputed domain names indicates bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See
DCI S.A. v. Link Commercial Corp., D2000-1232
(WIPO Dec. 7, 2000) (concluding that the respondent’s non-use of the domain
name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that non-use of
a domain name permits an inference of registration and use in bad faith); see
also State Farm Mutual Auto. Ins.
Respondent’s claim that he was in process of preparation for the use of the website merely for the purposes of a non-profit business is not persuasive, since Respondent admits that even though the disputed domain name was owned for eight months such a use did not start until the date of this decision. Respondent’s failure to provide content with its disputed domain name evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Express Scripts, Inc. v. Windgather Investments Ltd., D2007-0267 (WIPO April 26, 2007).
Unlike Respondent’s contention, the elements listed under ICANN Policy 4(b) and (c) are not exclusive for findings of bad faith and the Panel is free to infer bad faith from other situations.
Respondent contends that this dispute should be reviewed under Korean law, and that ‘even the Respondent is found to infringe the Complainant’s right, he has no obligation to transfer the Domain Name by citing a Korean court case. However, it is incorrect because the Respondent expressly agreed to submit to, and be bound by, the current administrative proceeding under which the available remedies are expressly stipulated as TRANSFER or CANCELLATION of the disputed domain name.
Even though TRANSFER of disputed domain name is not expressly provided for available remedy under Korean laws, the existence of such provisions of Korean laws cannot necessarily preempt the binding effect of the agreement between the parties in that Korean laws do not positively prevent the transfer of indications of goods and service but simply provide for CANCELLATION of such names as one of the remedies. As such, the agreement between the parties with the transfer of the disputed domain name being available should not be in violation of Korean laws.
This is especially because the rationale of the Korean laws providing for the CANCELLATION of the domain name registration or the destruction of the objects caused the infringement of another person’s right lies in the prevention of the repeated infringement by destructing such objects. However, in case of the domain name registration unlike usual indications of goods or services, mere its cancellation would not prevent such repeated infringement or re-registration by a third party under the domain name registration system where a priority is not given to the prevailing Complainant in the administrative proceeding under UDRP, and thus it is very difficult for the prevailing Complainant to win the registration of the cancelled disputed domain name in the extremely high and open competition. In other words, it is also highly likely for a third party including the very registrant of the cancelled disputed domain name to win the registration of the disputed domain name and the website using the disputed domain name will still remain under the reign of a third party. Such situation directly conflicts the rationale of the Korean laws.
Moreover, the transfer and the transaction of indications of goods and services such as trademark, trade name, etc. are available by a free agreement between individuals and business entities. As such, when the disputed domain name is found to satisfy all of the requirements under UDRP, the registrant of the disputed domain name bears the contractual obligation under the registration agreement to transfer the disputed domain name if so decided by the Panel. Otherwise interpreted, it would not be able to explain the free transaction of domain names in reality.
Accordingly, for all the various reasons discussed above, the Panel finds that the disputed domain name has been registered and being used by the Respondent in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomson-reuters.com> domain name be TRANSFERRED from Respondent to ‘Thomson Canada Limited’ and ‘Thomson Finance S.A.’ of Complainant.
Ho-Hyun Nahm, Panelist
Dated: February 5, 2008
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