achannel.com

Craig Media, Inc. v. Kim Hyungho

Case No. D2004-0091

The Complainant is Craig Media, Inc, Calgary, Canada ("the Complainant"), represented by Neil F. Kathol, Brownlee LLP, Baristers & Solicitors, Canada.

The Respondent is Kim Hyungho, Ilgok-Dong, Gwangju

Buk-Gu, Republic of Korea ("the Respondent").

The disputed domain name <achannel.com> ("the Domain Name") is registered with OnlineNic, Inc ("the Registrar").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2004. On February 3, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2004, the Registrar 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. A Complaint Deficiency Notification was issued by the Center on February 6, 2004.

Between February 10 and February 13, 2004 email correspondence between the Center and the Complainant ensued. The Complainant submitted an amendment to the Complaint on February 13, 2004. The Center verified that the Complaint together with the amendment to 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 February 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2004. The Response was filed with the Center on March 5, 2004.

The Center appointed Tony Willoughby ("the Panel") as panelist on this matter on March 12, 2004. The Panel finds that it was properly constituted and 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.

The Complaint Deficiency Notification referred to above concerned the Mutual Jurisdiction clause. By virtue of Rule 3(b)(xiii) the Complaint must contain a statement to the effect that the Complainant will submit with respect to any challenges to a decision in the administrative proceeding, canceling or transferring the domain name to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. The Mutual Jurisdiction clause is the clause in the Complaint containing that statement.

"Mutual Jurisdiction" is defined in Rule 1 as follows:-

"Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain name holder has submitted in its registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holder’s address as shown for the registration of the domain name in registrar’s Whois database at the time the complaint is submitted to the provider."

In the Complaint as originally filed, the Mutual Jurisdiction clause read as follows:-

"In accordance with paragraph 3(b)(xiii) of the Rules, the Complainant will submit, with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer the Domain Name that is the subject of this Complaint, to the jurisdiction of the Courts at: San Francisco/Oakland, California, United States of America."

The Complainant framed the Mutual Jurisdiction clause in that way because, having visited the Registrar’s website and examined the Registrar’s Member Agreement, the Complainant found that the relevant clauses of the Registrar’s joint agreement (available at "www.onlinenic.com/english/agreements/serviceterms.html") are as follows:-

"Modification and Notices

This Member Agreement as well as our services are subject to change from time to time. OnlineNIC will email members about such changes. If changes are not acceptable, members will have seven calendar days to terminate this Agreement and forward their decision to OnlineNIC at [email protected] promptly, otherwise changes will be deemed as accepted by members."

"Governing law; jurisdiction; waiver of trial by jury

This Agreement and all rights thereunder shall be governed by the internal laws of the State of California, without regard to such State’s policies relating to conflict of laws. Any action relating to or arising out of this Agreement or to your or your agent’s use of our services shall be brought exclusively in the Courts of Alameda County of California located in Oakland, California. For the adjudication of disputes concerning or arising from this Agreement or the use of any TDL name(s) you agree to submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the Courts (1) of your domicile and (2) of California, USA or the US County Court for Alameda County of California located in Oakland, California. You waive the right to trial by jury in any such proceeding."

Accordingly, the Complainant reasonably and justifiably assumed that the Respondent had entered into a Member Agreement with the Registrar containing these terms.

On receiving the original version of the Complaint the Center contacted the Registrar for information on a number of topics. Amongst other things the Center asked the Registrar to "indicate whether the domain name registrant has submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name(s) (Rules paragraph 1)".

The Registrar responded as follows:-

"The Domain Name registrant Kim Hyungho has not submitted in its Registration Agreement to the jurisdiction at the location of the principal office of us for court adjudication of disputes concerning or arising from the use of achannel.com."

On the basis of this answer the Center called upon the Complainant to amend the Mutual Jurisdiction Clause in the Complaint.

The Complainant has done so, but very reluctantly. The amended Mutual Jurisdiction Clause now reads as follows:-

"The WIPO Arbitration and Mediation Center ("the Center") has requested that the Complainant provide a complaint amendment. The amendment requested is an amendment to paragraph 14 of the Complaint. The Center has requested that the Complainants submit to the mutual jurisdiction of the Respondent (Korea) as the place where the Complainant will submit, with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of this Complaint.

The Complainant so provides the requested amendment but also requests re-consideration of the request for the amendment and re-consideration of the deficiency cited against the Complainant …"

The Complainant has asked the Panel to review the position and retract or cancel the request for an Amended Complaint. The basis for the Complainant’s request is that the Registrar’s principal office is in California and the Respondent must have submitted to the jurisdiction of the Californian Courts in line with the Member Agreement featured on the registrar’s website and quoted above.

Much of the Complainant’s argument seems to stem from a belief that the Respondent has submitted to the jurisdiction of a Court at the location of another "principal" office of the Registrar outside the United States. There is nothing before the Panel to that effect.

The Panel agrees with the Complainant that all the available evidence points to the Registrar’s principal office being in California. Indeed, the ICANN website identifies the Registrar as a United States registrar.

The issue is simply as to whether or not the Registrar’s response to the Center on this topic justified the Center in seeking the amendment and, if it did, whether the Center was right to accept it at face value. The Complainant is of the view and argues strongly that the Center should have looked behind the Registrar’s response.

The Panel is at one with the Center in reading the Registrar’s answer to the Center’s question as being an indication that the Respondent has not submitted to the jurisdiction of any Court at the location of the (or indeed any) principal office of the Registrar and that the relevant Court jurisdiction for disputes over the Domain Name is therefore in Korea, the Whois address of the Respondent.

As to whether or not the Center was correct to accept the Registrar’s response at face value, again, the Panel agrees with the Center. Neither the Center nor the Panel has the power to interrogate the Registrar. If the Registrar has provided a false or misleading answer, then that is of course a very serious matter, but it is a matter to be taken up with ICANN.

In so saying, the Panel does not seek to suggest that the Registrar may have provided any false or misleading answer. The Complainant’s case is dependent entirely upon the assumption that the Respondent has entered into a registration agreement along the lines of the member agreement featured on the Registrar’s website. It seems to the Panel that that could easily be an erroneous assumption. Certainly the Panel is no position to conclude that the Registrar’s response to the Center merits further investigation simply on the basis of that assumption.

The Panel could have sought further information from the Respondent as to the form of registration agreement which he concluded with the Registrar, but it was not necessary for the Panel to do so to enable the Panel to fulfil its function, namely to adjudicate the substance of the dispute.

In the event, as will be seen below, the issue is an academic one in so far as this case is concerned in that the Complaint has failed. Nonetheless, the Panel felt it appropriate to deal with the issue fully because so much time and effort has been devoted to it by the Complainant.

The Panel concludes that the Center was right to request the Complainant to amend the Complaint as it did.

The Complainant is a Canadian corporation carrying on business in Canada as a substantial, privately owned television broadcaster. Much of its business is carried on under the name "A-Channel" and by reference to a device mark featuring the name "A Channel". The Complainant is the proprietor of Canadian trade mark registrations covering those marks in one shape or form.

At one time the Complainant was the owner of the Domain Name, but inadvertently allowed the registration to lapse. The evidence does not disclose when that occurred.

The Respondent registered the Domain Name on April 15, 2001.

As at June 24, 2003, the Domain Name was connected to a website which featured on its homepage the phrase "under construction" and advertisements for sexual products for men.

The Complainant launched the Complaint without, it seems, having sought to make any contact with the Respondent.

The Complainant contends that the Domain Name is identical or confusingly similar to its A-CHANNEL and A CHANNEL trade marks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it never authorised the Respondent to use its trade marks. The Complainant summarises its position under this heading as follows:-

"…. It appears that the Respondent has registered the Domain Name identical to the Complainant’s marks to draw consumers of the Complainant’s services to the Respondent’s website. This is an unfair, unjustifiable, or illegitimate use of the disputed domain name."

"The Respondent’s registration of the disputed domain name has caused visits to the Respondent’s website which has brought the reputation of the Complainant into disrepute, has undermined the goodwill of the Complainant, has depreciated the value of the goodwill in the Complainant’s marks, has brought great inconvenience to the plaintiff by its employees and others being required to use email addresses not incorporating the "achannel" word and has caused the Complainant lost business opportunity and revenues due to its inability to promote its website to in turn promote its television broadcasting services."

Finally, the Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. The basis for this allegation is that when the Respondent registered the Domain Name he was aware of the fame of the Complainant and its A-CHANNEL and A CHANNEL trade marks and the services provided by the Complainant under those trade marks. The Complainant contends that the Respondent deliberately selected the Domain Name with a view to diverting would-be internet visitors to the Complainant’s site to the Respondent’s site and for commercial gain. Under this head the Complainant puts its position as follows:-

"The Complainant was once the registrant of the disputed domain name and used it, but inadvertently allowed that registration to lapse. The Respondent registered the disputed domain name in a blatant attempt to capitalize on the commercial opportunities associated with the popularity of the disputed domain name, and with the likelihood that persons familiar with the Complainant’s services and marks, would use the disputed domain name to locate a website operated by the Complainant.

The Respondent contends that the Complainant has no rights in the trade mark "ACHANNEL" but appears to accept that the Complainant is the proprietor of a trade mark registration for A-CHANNEL.

The Respondent asserts that he has rights and legitimate interests in respect of the Domain Name, he having been "working hard since May 2003, to establish a movie providing portal using achannel.com for net users in Korea." He says that he is now in the finishing stages of setting the site up. He exhibits a number of web pages featuring the Domain Name and the name AChannel.

The Respondent denies that he registered the Domain Name in bad faith and is using it in bad faith. He says that "at the time I registered the domain I had no idea of the existence of petitioner’s company and trade mark; there is almost no-one in Korea where the domain is registered who is aware of the entity of such a company."

He refers to the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and denies that any of them are applicable in this case.

According to paragraph 4(a) of the Policy, the Complainant must prove that

(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 in bad faith and is being used in bad faith.

The Domain Name is in substance the Complainant’s trade mark with the addition of the generic domain suffix. While it does not precisely replicate the registered marks, it is very similar to those marks. Moreover, the Complainant has produced ample evidence to demonstrate that it has a significant reputation and goodwill under and by reference to the name "A Channel".

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

The Respondent may or may not have legitimate interests in respect of the Domain Name. The ‘evidence’ on this issue put before the Panel by the Respondent is almost entirely in the Korean language and the Panel has not been able to decipher any dates for that material.

However, it is unnecessary for the Panel to explore this issue any further, given the Panel’s finding below on the question of bad faith.

The Complainant makes a number of assertions as to the Respondent’s motives for registering the Domain Name but without a shred of any supporting evidence. The Complainant’s approach seems to be: A-Channel is very famous in Canada, the Domain Name was once owned by the Complainant; on the registration lapsing, the Respondent, a Korean, snapped it up. The Respondent was aware of the Complainant’s reputation and goodwill in Canada and has deliberately set out to take a free ride on the back of the Complainant’s reputation and goodwill.

The Respondent denies that he was aware of the Complainant and its A-CHANNEL mark when he registered the Domain Name. If, as the Respondent asserts, the Respondent was not aware of the Complainant and its trade marks at the time of registration of the Domain Name, the Complaint must fail. The bad faith concept necessarily involves the registrant registering the Domain Name with the Complainant or its trade marks in mind.

The fact that the Complainant and its A-Channel is very well known in Canada does not mean that it is well known in Korea. The Complainant has produced no evidence to suggest why it should have been well known in Korea. The Panel sees no reason why the Respondent should have been aware of the Complainant and its A-Channel when he acquired the Domain Name.

In these circumstances, the Panel declines to override the Respondent’s denial on this crucial point and finds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith.

Needless to say, if the Complainant had produced evidence to show that the Respondent had registered the Domain name with the Complainant in mind and/or was in the habit of adopting other people’s trade marks for his domain names, the result would have been very different.

The Complaint is dismissed.