DECISION

Television Broadcasts Ltd. V. TVBS

Claim Number: FA0111000102512

PARTIES

Complainant is Television Broadcasts Ltd., Kowloon, HONG KONG (“Complainant”).  Respondent is TVBS, Jungli, TAIWAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tvbs.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.

James A. Carmody, Esq., 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 November 29, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <tvbs.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 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.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <tvbs.com> domain name is identical to Complainant’s TVBS mark.

Respondent does not have any rights or legitimate interests in the domain name at issue.

Respondent registered and used the domain name in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant first registered the TVBS trademark in 1993, and has current registrations of the trademark in Singapore, Malaysia, PRC, Taiwan, and Thailand.  Complainant has used the mark in relation to its television station in Taiwan since September 1993.  The TVBS television station is now the leader in Taiwan’s highly competitive cable TV market.  TVBS currently enjoys the highest ratings of any cable TV network in Taiwan, where there are over 90 cable TV channels to choose from. 

Complainant’s TVBS satellite services are currently available to viewers in Singapore, Malaysia, New Zealand, Philippines, Indonesia and North America.  Additionally, Complainant has also established a presence on the Internet with its <tvbs.com.tw> domain name.

Respondent registered the domain name on April 20, 1998, well after Complainant began using its TVBS mark.  Respondent has not made any use of the domain name.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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

Complainant has common law rights in the TVBS mark due to the substantial goodwill Complainant has created among the public through Complainant’s visible use of the mark in its television broadcasting services.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [“keppelbank.com”] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <tvbs.com> domain name is identical to Complainant’s TVBS mark because the addition of  a top-level domain like “.com” does not distinguish the domain name from Comlainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

           

Moreover, the <tvbs.com> domain name is confusingly similar to Complainant’s mark because it creates a likelihood of confusion for the Internet user as to Complainant’s association with Respondent’s website.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

            Rights or Legitimate Interests

The Panel is permitted to make all inferences in favor of Complainant when Respondent has failed to respond to Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s failure to provide a Response indicates that Respondent has no rights or legitimate interests.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s failure to develop the domain name is evidence that Respondent does not have rights or legitimate interests in the domain.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

Respondent’s use of a domain name that is identical to Complainant’s famous mark is evidence of Respondent’s attempt to trade on the good will of Complainant’s famous service mark.  This cannot constitute a bona fide offering of goods, and therefore, indicates Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i).  See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (finding that the use of a domain name that intentionally trades on the fame of another can not constitute a bona fide offering of goods).

There is no evidence that Respondent is commonly known by the disputed domain name.  As a result, Respondent has not demonstrated rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent’s use of an identical domain name to suggest a false affiliation with Complainant is not considered a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR)

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied

           

Registration and Use in Bad Faith

As a resident of Taiwan, Respondent either knew or should have known of Complainant’s well-known mark.  Respondent’s constructive knowledge of Complainant’s mark along with its passive holding of the domain name is considered evidence of bad faith.  See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name "winegallo.com"); see alsoDCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

Moreover, because Complainant’s mark was so well known where Respondent resides, and because Respondent is not affiliated with the mark, Respondent’s behavior is considered opportunistic bad faith.  See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

Finally, Respondent has demonstrated bad faith by registering and using a domain name that is likely to be falsely associated with Complainant’s services by Internet users.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

            The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <tvbs.com> be hereby transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 11, 2002

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