FRIDAY,12 DECEMBER 2014 the DOMAINS
According to the news from English.domain.cn on December 12th,TVBS.com, a domain name registered on April 20, 1998 has been ordered transferred to a trademark holder in a UDRP decision handed down by the Asian Domain Name Dispute Resolution Center (“ADNDRC”).
Some of the language in the decision is troubling as is the failure of the panel to even consider or discuss the legal concept of latches due to the 16 year delay in taking action.
The Complainant is the TVB, Television Broadcasts Limited (listed on the main board of The Stock Exchange of Hong Kong Limited), commonly known as TVB, was established on 19 November 1967 and is the first wireless commercial television station in Hong Kong.
They own the domain name TVB.com which was first registered in 1999.
“Headquarters in Hong Kong, TVB provides round-the-clock entertainment channels and news service to over 7 million Hong Kong viewers and operates an international licensing and distribution business.”
While the Respondents did not submit a formal Response to the Complaint but did sent an email to the panel, which the panel discusses below but did not treat as a response.
What the panel did not consider at all or even discuss, is the 16 year delay from the time the domain name was registered to the time the trademark holder “discovered” this domain name TVBS.com has been registered.
Laches is apparently not a term or concept that is used or understood in Asia or at least by this panelist.
The panelist did however accept the trademark holders argument that moving the domain name recently to Privacy was a huge indication of bad faith of the domain holder saying:
“Obviously, the First Respondent tried to use this means to hide its name from being disclosed to the public, which suggests a highly suspect motive. It is not the way a legitimate business would operate
Here is what the trademark holder had to say:
“TVB happened to become aware that an entity named “Shen, Ying-Wei (The Vacation Bacchic Studio)”, had registered the Disputed Domain Name on April, 20, 1998.
By conducting a WHOIS search, it was discovered that the First Respondent was located in Taoyuan County, Taiwan.
Apparently, the First Respondent is an organization or an individual located in Taiwan.
Furthermore, the registration of the Disputed Domain Name http://www.tvbs.com has been changed to a company named “PERFECT PRIVACY, LLC”, which provides domain name holders with a privacy service to conceal the registrant’s real name from the public.
Obviously, the First Respondent tried to use this means to hide its name from being disclosed to the public, which suggests a highly suspect motive. It is not the way a legitimate business would operate.”
In addition, TVB has already obtained the registry of tvbs.com.tw (registered in 1997).
TVB obtained the trademark registrations of TVBS prior to the date of April 20, 1998 which the Respondent registered the domain name tvbs.com
“The Disputed Domain Name does not appear to be in use for any bona fide offering of goods or services or to have been established in anticipation for such use, and there is no indication that the Respondents were known by the name “TVBS” prior to the registration of the domain name.
Here is what the panelist had to say:
“The Panelist has carefully considered the representations contained in Ying-Wei “Gary” Shen’s 20 November 2014, reply email to the ADNDRC, and finds them to be misleading and false, particularly when viewed against the robust and highly persuasive documentary evidence adduced by the Complainant. Furthermore, the First Respondent’s assertion that it is not bound to comply with the URDP dispute resolution procedure, because the domain was registered on 20 April 1998, which was “before the [UDRP rules and] policy was adopted: August 26, 1999″, is without merit.”
The Registrar’s 14 November 2014 email to the ADNDRC expressly states: “We confirm that the Uniform Domain Name Dispute Resolution Policy applies to the tvbs.com domain name”. That this is true, and that this Panel has jurisdiction over this dispute, is apparent from the terms of the service agreement found on the Registrar’s public website, which reads (in relevant part):
“12. MODIFICATIONS TO AGREEMENT. Except as otherwise provided in this Agreement, you agree during the term of this Agreement, that we may: (1) revise the terms and conditions of this Agreement; and/or (2) change part of the Services provided under this Agreement at any time. Any such revision or change will be binding and effective after posting of the revised Agreement or change to the service(s) on Network Solutions Websites, or upon notification to you by email or United States mail. You agree to periodically review our Websites, including the current version of this Agreement available on our Websites, to be aware of any such revisions. If you do not agree with any revision to the Agreement, you may terminate this Agreement at any time by providing us with notice. Notice of your tennination will be effective on receipt and processing by us. Any fees paid by you if you terminate your Agreement with us are nonrefundable, except as expressly noted otherwise in one or more of the Schedules to this Agreement, but you will not incur any additional fees. By continuing to use Network Solutions Services after any revision to this Agreement or change in service(s), you agree to abide by and be bound by any such revisions or changes. Weare not bound by nor should you rely on any representation by (i) any agent, representative or employee of any third party that you may use to apply for our services; or in (ii) information posted on our Website of a general informational nature. No employee, contractor, agent or representative of Network Solutions is authorized to alter or amend the terms and conditions of this Agreement.
22. AGREEMENT TO BE BOUND. By applying for a Network Solutions service(s) through our online application process or otherwise, or by using the service(s) provided by Network Solutions under this Agreement, you acknowledge that you have read and agree to be bound by all terms and conditions of this Agreement and documents incorporated by reference”.
That is, upon registering the Disputed Domain Name, the First Respondent became bound by the terms of the (on line) service agreement with the Registrar. Pursuant to that agreement, the First Respondent agreed that the terms of the service agreement would be changed from time to time by the Registrar; that such changes would become binding on the First Respondent upon posting on the Network Solutions Websites; and that the First Respondent’s continuing use of the domain name would evidence the First Respondent’s agreement to be bound by such new or different terms.
Furthermore, the fact that the First Respondent employed the Second Respondent as its agent in relation to the Disputed Domain Name provides no defense. Paragraph 14 of the Registrar’s service agreement provides:
“14. AGENTS. You agree that, if your agent, (e.g., your PrimalY Contact or Account Administrative Contact, Intemet Service Provider, employee) purchased our service(s) on your behalf, you are nonetheless bound as a principal by all terms and conditions herein, including the domain name dispute policy. Your continued use of our services ratifies any unauthorized actions of your agent. By using your login name, account number or password, or otherwise purporting to act on your behalf, your agent certifies that he or she is authorized to apply for our services on your behalf, that he or she is authorized to bind you to the terms and conditions of this Agreement, that he or she has apprised you of the terms and conditions of this Agreement, and that he or she is otherwise authorized to act on your behalf. In addition, you are responsible for any errors made by your agent”.
That is, even assuming that the First Respondent’s lack of awareness or understanding of its obligations under its service agreement with the Registrar resulted from some failure or defalcation on the part of its agent, the Second Respondent, this provides no defense to the First Respondent, who remains bound by the service agreement, including the obligation to be bound by the UDRP, as amended by the Registrar from time to time.
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be granted. Accordingly, it is ordered that the <tvbs.com