The Complainant is Channel Television Limited of St Helier, Jersey, United Kingdom of Great Britain and Northern Ireland, represented by Davenport Lyons, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Legacy Fund LLC of Laytonsville, Maryland, United States of America; Protected Domain Services - Customer ID: R-3108040 of Denver CO, United States of America, represented by John Berryhill, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Christian Investments LLC. 3. Procedural History
The Complaint naming as Respondent both Protected Domain Services and Legacy Fund LLC was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On August 18, 2011, the Center transmitted by email to Christian Investments LLC a request for registrar verification in connection with the disputed domain name. Protected Domain Services submitted an informative filing on August 18, 2011. On August 19, 2011, Christian Investments LLC transmitted by email to the Center its verification response confirming that Legacy Fund LLC is listed as the registrant and providing the contact details, and disclosing Protected Domain Services is not listed as the registrant. .
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2011. The Response was filed with the Center on September 15, 2011.
The Center appointed Michael J. Spence, Clive Duncan Thorne and Tony Willoughby as panelists in this matter on October 3, 2011. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a television broadcaster that has operated in the Channel Islands since 1962 under various names including the words “channel” and “television” or “TV”. The company employs 70 people. Operating a statutory monopoly on the provision of broadcast services, it is well-known amongst the approximately 160,000 residents of the British Crown Dependencies in the English Channel. The Respondent operates in the secondary market for domain names. On February 16, 2011 it purchased the disputed domain name, which it regarded as consisting of merely generic words common in the television industry, for the purpose of on-sale as a part of its business. 5. Parties’ Contentions A. Complainant
The Complainant contends: that it has a longstanding acquired reputation in the trade marks “channel television” or “channel TV”.; that the disputed domain name is identical, or confusingly similar, to its marks; that the Respondent has no rights or legitimate interests in the disputed domain name (in particular that trading in the name itself does not constitute rights or legitimate interests); and that the disputed domain name was registered in bad faith and for the sole purpose of preventing the Complainant from registering a domain name corresponding to its well-known trade marks. B. Respondent
The Respondent contends: that the disputed domain name is generic, either as consisting in words commonly descriptive in the television industry or geographically descriptive; that the Complainant therefore has no trade marks which can be regarded as identical, or confusingly similar, to the disputed domain name; that having invested a significant amount of money in the purchase of the disputed domain name for the purpose of legitimate resale, the Respondent has rights or legitimate interests in the name; and that given that the disputed domain name has been registered for some time, and the Respondent had no knowledge of the Complainant’s business, it is unable to establish bad faith. The Respondent believes that the Complainant is “symptomatic of the common misuse of the Policy as a negotiating tactic” known as reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
Acquired distinctiveness for descriptive and geographical terms requires considerable proof of established reputation and goodwill. Such proof may, in UDRP proceedings, in part consist in evidence of registrations of trade marks. In situations where there is no registered trade mark then proof of distinctiveness must be very clearly laid out in a Complaint brought under the Policy.
In this case the Complainant has brought little evidence of acquired distinctiveness and even less of acquired distinctiveness outside the geographically restricted area of the Channel Islands where it is well-known.
In contrast the Respondent has been able to bring Internet search based evidence to demonstrate the ubiquity of business identifying terms involving the words “channel” and “TV” and the lack of a strong presumptive connection between the terms and the Complainant.
The Respondent makes a number of points in support of its allegation that "Channel TV" is not a trade mark or service mark in the hands of the Complainant. It contends that trade names (and Channel TV is a trade name of the Complainant) are expressly excluded from the Policy. It also contends that the public awareness of Channel TV is confined to such a small geographical area that it "cannot credibly assert a monopoly in the primary generic meaning of the word ‘channel’ in connection with television, and certainly not on an international basis".
Taking the second point first, paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) includes the following sentence: “The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trade mark.”
In relation to the first point, while it is accurate, it is incomplete. Personal names are also excluded from the operation of the Policy as are geographical identifiers. However, all three are capable of acquiring a secondary meaning and in such circumstances, as trade marks, they are covered by paragraph 4(a)(i) of the Policy (Paragraphs 1.5 and 1.6 of the WIPO Overview 2.0).
In the view of the Panel, the Complainant has just got over the threshold for establishing unregistered rights in a name. Given the highly descriptive nature of the name, the scope of those rights will of course be very narrow. Nonetheless, it is unlikely that a competing broadcaster could lawfully trade under and by reference to the name "Channel TV" in the Channel Islands.
The disputed domain name is therefore identical to the Complainant's unregistered trade mark "Channel TV".
The Panel therefore finds that the Complainant has established the first element of paragraph 4 (a) of the UDRP Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.WIPO Case No. D2003-0455 , Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
It is not in itself wrongful to trade in domain names, and investment in the secondary market for domain names can constitute the basis of a legitimate interest in a domain name, provided that the domain name is not being acquired in contexts in which its use identical, or confusingly similar to, a complainant’s trade mark and the registration is not in bad faith.
In this case, the Complainant has brought little evidence that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has made the plausible claim that it was legitimately engaging the secondary market for domain names in ignorance of the Complainant’s business.
The Panel therefore finds that the Complainant has failed to establish the second element of paragraph 4(a) of the UDRP Policy. C. Registered and Used in Bad Faith
To establish the requirement of bad faith the Complainant has merely asserted, without evidence, that the disputed domain name was acquired for the purpose of preventing its registration by the Complainant, and that the Respondent “has engaged in such a pattern of conduct.” The Respondent, however, has offered an alternative account of both its acquisition of the disputed domain name, and its offering for sale other domain names, as a part of its participation in the secondary market. There is no reason in the Complaint to prefer the assertions of the Complainant over the account of its behaviour offered by the Respondent.
The Panel therefore finds that the Complainant has failed to establish the third element of Paragraph 4(a) of the UDRP Policy. D. Reverse Domain Name Hijacking
Although the Respondent alludes to the possibility that the complaint in this case entails reverse domain name hijacking, it has not fully argued this point. Evidence of such abuse of the UDRP process must be clearer than it is in this case for such a finding to be made by a Panel on its own account. For that reason, the Panel declines to make any finding on this point. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Presiding Panelist
Clive Duncan Thorne
Panelist
Tony Willoughby
Panelist
Dated: October 18, 2011
Full & Egal Universal Law Academy