Ari Goldberger Beats Back UDRP On UTV.com
Ari Goldberger beat back a UDRP on the domain name UTV.com brought by UTV Limited of Belfast
Here are the relevant facts and findings of the three member panel:
The Complainant was formed in November 1958 as Programme Contractor for Northern Ireland and was incorporated as Ulster Television in 1959.
It has been broadcasting television and radio in Northern Ireland since October 1959.
As such the Complainant is the TV arm of UTV Media plc, which is a media company in United Kingdom and Ireland incorporating radio, television, new media and publishing.
The Complainant has a national registered device mark UTV with registration number 2233923A in United Kingdom since May 25, 2001 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42 for, inter alia, computer related goods and service, television and radio broadcasting services and entertainment.
The Respondent registered the disputed domain name on August 19, 2005 after it became available for registration.
The Respondent first relied on the doctrine of laches for the reason that the Complainant waited over seven years before filing its Complaint against the Respondent. Although the Panel cannot rule out that the doctrine of laches could apply to this case for the reason put forward by the Respondent, the Panel rather prefers to decide this matter on the merits as set forth below.
The Panel is of the opinion that the Complainant sufficiently showed that it has rights in the Trademark, which predate the registration of the disputed domain name by the Respondent. Although the registered trademark as referred to in paragraph 4 above is for a device mark, the Panel is of the opinion that this device mark consists of the letters “utv” in a specific graphical form, which can only be represented in a domain name as “utv.” Therefore the Panel finds that the disputed domain name is identical to the Trademark UTV, and the first element is met.
The disputed domain name consists of only three letters. The Respondent submits a declaration of Mr. Kwang Pyo Kim, who claims to have registered the disputed domain name, that he registered the disputed domain name because it is a three-letter combination to which he believed no party could claim exclusive rights and it also an acronym for many different third party uses, and without him having knowledge of the Trademark. The Respondent further claims that “utv” stands for “utility terrain-vehicle” and submits evidence that the Complainant does not exclusively use “utv” in outside the context of television.
The Complainant submits that the different screenshots of the websites for the disputed domain name over the period from March 2001 and further, show that the different owners of the disputed domain name, including the Respondent, have mainly used the disputed domain name for advertised links for different products. But almost none of them compete with the goods and services for which the Complainant registered and uses the Trademark.
The Respondent admits that it has been registering common word domain names and combined letter domain names for investment and development since 1998 and that three or four letter domain names are registered because they best fulfill the purpose of a domain name which is to be easy to remember, and which are, therefore, commercially valuable. The Respondent further claims that the way it hosts its domain names (including the disputed domain name) with “parking” services is an industry-wide practice. It is well established that operating parking services using a trademark in a domain name and providing connection to services competitive with the trademark owner, does not establish rights or legitimate interests (e.g., Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021, with reference to other cases). The disputed domain name would not be used in connection to a bona fide offering of services or goods if there is evidence (i) that the disputed domain name has been used to compete with the Complainant, or (ii) of the Respondent’s intent to misleadingly divert consumers or to tarnish the Trademark for commercial gain (cf. paragraph 4(a) of the Policy).
In this case, however, the Panel did not find evidence that the landing pages associated to the disputed domain name support a finding of the Respondent attempting to compete with the Complainant or having the intent to misleading consumers.
The Panel endorses the finding of the panel in Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (with reference to other relevant cases) that use of “short terms that may be appropriate for a vanity email business, or even for sale, is a legitimate business model.”
The disputed domain name typically is such a short term which may represent many acronyms.
This could have been different if the Complainant’s claim that that the Trademark has a strong reputation and is widely known outside the (Northern) Ireland region, and – as the Complainant implied – more particularly in Republic of Korea where the Respondent is located
The Respondent could therefore have registered and used the disputed domain name. In absence of evidence of use of the disputed domain name to compete with the Complainant, to disrupt the Complainant’s business and/or to mislead consumers into letting them believe that they visited the Complainant’s website, the Panel is of the opinion that the disputed domain name is merely a generic short acronym in which the Respondent has a legitimate interest to use.
The Complainant therefore failed to demonstrate the second element of Paragraph 4(a) of the Policy.