23
May/07

L.A. Angels v. Angels.com


From a UDRP decision in which the L.A. Angels failed to obtain ANGELS.COM:
“Complainant denies that Respondent has any rights or legitimate interest in the disputed domain name. In its Complaint, it denies that Respondent owns any legitimate trademark rights in any ANGELS mark.
Respondent relies on the generic nature of the word “Angels,” what would give him a right to register the corresponding domain name. The Panel believes that by this bare allegation alone any respondent could develop a right or legitimate interest in a disputed domain name where as here, a complainant has trademark rights in a mark consisting of a generic word. Because this argument leads to an absurd conclusion, it should be dismissed. Nor is more useful to Respondent his suggestion that he registered the domain name because he calls his daughter “Daddy’s Angel,” since he does not provide any evidence of such fact. In this respect the Panel observes that the domain name in dispute is , and not .
Respondent’s reliance on his service mark registration for the ANGELS mark in Korea, whose certificate is shown at Annex 1 to the Response, deserves more attention. This registration covers services provided by day care centers or nursing homes of class 43. According to the Korean-speaking member of this Panel, the mark registered with Korea’s PTO is “엔젤스 ANGELS.” The text before the word “ANGELS” consists of Korean characters, the sound of which corresponds exactly to the English word “angels.”
As shown in the registration certificate, Respondent obtained the registration before he received any notice of the dispute. This is important in considering the weight of Respondent’s trademark registration. The Panel is aware that “the general principle that the owner of a domain name identical to a previous trademark or service mark may, when challenged by the trademark owner, establish (retroactively) legitimate use simply by filing a fresh trademark application in a jurisdiction other than those where the Complainant’s trademark is registered, is a dangerous principle.” See ISL Mktg. AG, & the Union des Associations Européennes de Football v. The European Unique Res. Org. 2000 B.V., D2000-0230 (WIPO July 5, 2000). However, differing from LION NATHAN LIMITED v. WALLACE WAUGH, D2000-0030, (WIPO Apr. 3, 2000), and as found in ISL Marketing, here Respondent’s registration of the ANGELS mark in Korea predates any notice of the dispute.
Furthermore, like in ISL Marketing, here Respondent apparently went through the registration process of his ANGELS mark without any opposition from Complainant. This is important, since Complainant, as contended in its Additional Submission and shown with Exhibit H, has two Korean trademark registrations for “Angels.” One of them is for “Angels stylized”, application No. 40-2004-49085, application date October 29, 2004, Registration No. 642913, Registration date December 13, 2005, where the “Angels” word is clearly displayed. The other registration is for “ANGELS and design,” application No. 82-6389, application date June 28, 1982, Registration No. 4000099840000, registration date April 7, 1984. Based on these registrations, Complainant could have opposed Respondent’s trademark application, but apparently chose not to do it.
In absence of contrary evidence, the Panel finds that Respondent’s trademark registration for ANGELS is a valid title under Korean law. See Cyrillus S.A .v. KRP Tekstil, D2001-0551 (WIPO Jul. 5, 2001) (finding that a trademark registration in Turkey was a valid title for the respondent since the trademark application had not been opposed by the complainant, and considering that an administrative panel under the Policy and Rules is not intended to carry out an assessment on the invalidity of a trademark).
The Panel is aware that a respondent might seek the registration of a trademark in a convenient foreign jurisdiction, where the complainant had no trademark registrations, in order to fabricate rights or legitimate interests in a domain name. See Société Vortex contre Association [email protected], D2001-0803 (WIPO Aug. 22, 2001). Here, Respondent’s registration was not made in any country of convenience, but in Korea, his own country, and where Complainant had previous trademark registrations that could have been a basis for an opposition. The present case also clearly differs from Madonna. In Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000), the respondent had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name. Further, the panel there considered that Tunisian registrations were issued upon application, without any substantive examination. Under the circumstances, the Panel is not ready to find that Respondent’s trademark registration in Korea was obtained merely to circumvent the application of the Policy.
As there are no elements suggesting that Respondent’s trademark registration is other than genuine, the Panel finds that Respondent, based on his trademark rights in the mark ANGELS in class 43, has rights in the disputed domain name. See Westec Interactive Security, Inc. v. Express Post Ltd. (Westec Div.), D2005-0811 (WIPO Oct. 7, 2005) (finding that the respondent had rights in respect of the domain name because there was nothing suggesting that the respondent’s Russian Federation trademark registration was anything than genuine). In the circumstances, Respondent’s trademark registration is consistent with preparations of a bona fide offering of services of class 43.
In sum, Complainant failed to prove that Respondent lacks rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
Although the Panel’s finding under the second element makes a finding on bad faith unnecessary, the Panel believes that Complainant also failed in proving that Respondent registered the disputed domain name in bad faith. In order to make such a determination, a panel must be satisfied that the respondent was or must have been aware of the complainant’s mark, trade name or existence at the time of registering the domain name. In the present case, the Panel does not believe that Complainant succeeds in proving that Respondent knew Complainant’s ANGELS marks or trade name, or was otherwise aware of Complainant before acquiring the domain name at issue. Although Complainant asserts that it has profusely marketed and publicized its ANGELS marks and services in Korea, it does not provide the Panel with evidence leading us to conclude that a Korean citizen like Respondent should be found to know Complainant more likely than not. Further, the Panel does not believe that the theory of constructive knowledge may be applicable to a foreign country, as Korea is in respect of the U.S.A.
Independently from the fact that Complainant’s ANGELS mark is valid, it is also a generic term, in principle apt to support the assertions of Respondent, that he chose it because of its generic nature and because it can be used to refer to small children, such as those who would be taken care of in his planned day care center. The Panel believes that Complainant failed to show that its mark ANGELS is famous in Korea, or that it has acquired secondary meaning in such country, i.e. that the Korean public mainly perceives the word “Angels” as a trademark protecting an American baseball club or its services, rather than as a common noun referring to the messengers of God, or figuratively to small children. See Btex Ltd. v. Noble, FA 102464 (Nat. Arb. Forum Jan. 11, 2002) (finding that the complainant failed to show that the relevant public perceives the phrase “streetmap” as a trademark rather than as a mere description of the goods or services).
Further, it is not contested that Complainant’s agents first contacted Respondent in search of an offer to transfer the domain name for a price, and that Respondent did not know that they were Complainant’s agents. This fact does not support Complainant’s suggestion that Respondent registered the domain name with the primary purpose of selling it to Complainant. See FilmNet Inc. v Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the fact that it was the complainant and not the respondent who had initiated contact, inquiring about purchasing the domain name, tended to weigh against a finding of bad faith).
In sum, Complainant fails to prove that the disputed domain name was registered in bad faith. This finding makes unnecessary for the Panel to examine Respondent’s agreement with Sedo’s domain name “parking” services, and the resulting advertisements posted on the website at the domain name in dispute.”

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