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Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan [2004] GENDND 902 (14 July 2004)

1. The Parties

The Complainant is Emmis Television Broadcasting, L.P., d/b/a KHON-TV, Honolulu, Hawaii, represented by Bays, Deaver, Lung, Rose & Baba, Honolulu, Hawaii, United States of America.

The Respondent is Henry Chan, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <khon2.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2004. On May 19, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 24, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2004.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 30, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant operates as a broadcaster in Hawaii, under the trade name and trademark KHON-TV. Complainant is identified as the owner of the registered service mark KHON-TV, registered under the United States Patent and Trademark Office (“USPTO”) Registration No. 1473537. Use of the trademark in commerce appears to have commenced as early as 1965, through a predecessor in title.

Complainant has provided evidence of its trademark registration by producing a print-out from the electronic search system (TESS) on the USPTO website. This evidence is somewhat unsatisfactory, in that it indicates that the owner of the mark was Burnham Broadcasting Company Limited, and cryptically references the fact of an assignment, but fails to identify the name of the assignee/current owner. In fact, it appears that the Complainant is now the registered owner of the mark and related trade name (see Annex C print-out from the Hawaii Department of Commerce and Consumer Affairs). The panel is prepared to find, in the absence of any evidence to the contrary, that the Complainant does in fact own the trademark and trade name registrations in question. However, the Panel notes that these sorts of foundational facts ought to be established by clear evidence, rather than being left to a matter of inference and investigation for the Panel.

The Respondent Henry Chan has been involved in a significant number of domain name disputes, including the recent decisions in Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 and Pepsi Co. Inc. v. Henry Chan, WIPO Case No. D2004-0033. As noted in the Wal-Mart Decision (supra), Henry Chan has been characterized as a cybersquatter, named as a respondent and ultimately losing multiple cases involving famous trademarks such as NIKE, KELLOG, and PEPSI among others. The Respondent has failed to file any response in the present proceedings, continuing a pattern of conduct in prior cases.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(i) The domain name <khon2.com> is confusingly similar to the registered trademark KHON-TV, as it replicates the identical letter sequence of the first element of the mark, and then adds as a suffix the number 2, which is the channel number under which the Complainant operates.

(ii) The Respondent has no rights or legitimate interests in the domain name because (a) the domain name is not used in connection with a bona fide offer of goods or services; (b) Respondent is not commonly known by the domain name; (c) Respondent’s intent is to generate commercial gain and to mislead consumers.

(iii) The domain name is actually used to redirect users to a search engine and pop-up advertisements promoting vendors unrelated to KHON-TV.

(iv) The domain name was registered and is being used in bad faith, because the Respondent is using the domain name for commercial gain, through the intentional use of a name confusingly similar to the Complainant’s trademark and trade name. The Respondent is re-directing users to a search engine and web directory page which is unrelated to KHON-TV.

(v) The Respondent has been engaged in a pattern of bad faith conduct, as shown by decisions reached against him in at least 4 recent cited decisions.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must establish each of the three following elements:

i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. The Respondent has no rights or legitimate interest in respect of the Domain Name; and

iii. The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s registered trademark KHON-TV has 2 elements, the first being the relatively distinctive combination of letters “KHON”, and the second being the descriptive element “TV”. The Panel accepts the Complainant’s submission that the letters “KHON” have no independent meaning, supporting the conclusion that this element is inherently distinctive.

The Respondent has appropriated this distinctive element into his chosen domain name, adding only a single number “2” as a suffix. The Panel notes that the number corresponds to the channel identifier used by the Complainant. In essence, the Respondent has substituted the channel number “2” for the Complainant’s suffix “TV”. In the Panel’s view, the addition of this different element is not sufficient to obviate or even reduce the likelihood of confusion. By incorporating the distinctive part of the registered mark, and using it as the first element of the domain name, the Respondent has clearly adopted a confusingly similar mark. The caselaw on confusion, in the context of the addition of descriptive words, is well-developed (see Wal-Mart supra; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Hoffman-LaRoche Inc. v. Eric Kaiser a/k/a eDrugnet, WIPO Case No. D2003-0721). However, there are relatively few cases that deal with a trademark which is truncated, and then modified to add a different final element. The Panel relies on the principle enunciated in Booz Allen Hamilton Inc. v. Human Works Inc., WIPO Case No. D2002-0656 to the effect that “Confusion is far more likely to occur when the first part of trademarks and domain names are identical”. See also Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (use of shortened trademark in <deloitt.com> domain name).

The Panel concludes that the Complainant has established its case under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In light of the pattern of cyber-squatting engaged in by thee Respondent, and his complete failure to provide any evidence, it is difficult to conceive of a legitimate right or interest on his part in connection with the domain name in question.

There is no evidence that the Respondent is commonly known by this domain name. It also cannot be said that the Respondent is using the domain name in connection with a bona fide offering of goods or services. The evidence shows that the Respondent operates a skeletal website, which serves only to redirect users to a search engine and unrelated third party vendors. The Panel is not satisfied that this amounts to a bona fide offering of goods or services. Finally, the Panel finds that there is no legitimate non-commercial or fair use, since the Respondent’s website, such as it is, operates on a commercial basis. (See Cancer Treat Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611; and Wal-Mart case, supra).

The Panel concludes that the Complainant has satisfied the second requirement under paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

In the absence of evidence from the Respondent, the Panel accepts the Complainant’s argument with respect to bad faith. In particular, the Panel notes that the essential facts in this case correspond closely to the example cited in 4(b)(iv) of the Policy: that is, use of the <khon2.com> domain name to attract users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the Panel is prepared to find that the Complainant has satisfied the third element, under paragraph 4(c) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <khon2.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Date: July 14, 2004