Broadcaster fails to gain control of 'achannel.com'
In Craig Media Inc v Hyungho, World Intellectual Property Organization (WIPO) panellist Tony Willoughby has refused to order the transfer of 'achannel.com' to the owner of the mark A-CHANNEL. Willoughby held that the complainant had failed to prove that the domain name had been registered in bad faith because there was no evidence that A-CHANNEL was well known in Korea - the registrant's country of residence.
Craig Media Inc, a Canadian broadcasting company that trades under the name A-Channel, owns Canadian registrations for the A-CHANNEL mark. It registered the domain name 'achannel.com' but inadvertently allowed the registration to lapse. It later discovered that the domain name had been registered by a Korean national called Kim Hyungho who was using it to host a website that featured adverts for "sexual products for men". Craig Media filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy contending, among other things, that Hyungho had registered the domain name in bad faith on the grounds that he was aware of the goodwill in the A-CHANNEL trademark and had set out to take a free ride on its reputation.
In response, Hyungho asserted that he had legitimate interests in 'achannel.com' and was not aware of the existence of Craig Media's trade name and mark.
Willoughby noted that the disputed domain name was confusingly similar to Craig Media's trademark. However, he dismissed the complaint as Craig Media had failed to prove that Hyungho had registered the domain name in bad faith. He stated that Craig Media had not presented any concrete evidence in support of its assertions as to Hyungho's motives. The fact that Craig Media's trade name and mark were well known in Canada did not mean that they were well known in Korea. Willoughby stressed that there was no reason why Hyungho should have been aware of the name and mark when he acquired the domain name.
Willoughby pointed out that the outcome would have been different had there been proof that Hyungho (i) had registered the domain name with Craig Media's mark in mind, or (ii) had a history of adopting other parties' trademarks as domain names.
Mike Butler, Hammonds, London
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