Angels Baseball, L.P. v. Lee Dongyeon
Claim Number: FA0702000925418
Complainant is Angels Baseball, L.P. (“Complainant”), represented by Richard
S. Mandel, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <angels.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Richard DiSalle as Panelist.
Sean (Myung-Suk) Choi as Panelist.
Roberto A. Bianchi as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2007.
On March 2, 2007, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <angels.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 29, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
On March 5, 2007, the Forum identified a deficiency in the Complaint, and required Complainant to submit a translation of the Complaint into Korean. Complainant timely complied with this request.
A timely Response was received and determined to be complete on March 20, 2007.
On March 23, 2007, Complainant timely made an Additional Submission in compliance with Supplemental Rule 7. On March 28, 2007, Respondent timely submitted a reply to Complainant’s Additional Submission.
On April 5, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Richard DiSalle and Sean (Myung-Suk) Choi as Panelists, and Roberto A. Bianchi as Chair Panelist.
On April 17, 2007, the Panel issued a Procedural Order. Because English is the only language that both parties and all members of the Panel understand, the Panel decided that the remainder of the proceeding be conducted in English, and that the decision on the merits be rendered in English. Respondent was ordered to submit a translation of all his submissions into English to the Forum, with the exception of the panel decisions in Korean enclosed as exhibits to the Response. To this effect Respondent was given a time period expiring on May 1, 2007. The time period within which the Arbitrators were required to render their Decision was extended until further directive of the Panel.
On May 1, 2007 Respondent timely complied with the Procedural Order.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant basically contends the following:
- Since 1961, Complainant and its predecessors have owned the Major League Baseball club presently called Los Angeles Angels of Anaheim, and formerly known as Anaheim Angels, and California Angels.
- The Club owns various registrations for the ANGELS marks.
- The ANGELS marks have been extensively marketed and promoted nationally and internationally by media such as ESPN, CNN, etc. Through its agents MLBP and/or MLBAM, Complainant owns numerous domain names that consist of or contain the ANGELS marks. All these domain names connect directly to the official website of the Angels Club which is maintained at http://losangeles.angels.mlb.com.
- Upon information and belief, Respondent registered and uses the domain name in dispute, which incorporates and is identical and/or confusingly similar to the ANGELS marks, with the intent of misleading and diverting Internet users away from the authorized marketplaces, on the MLB.com website and the Angels official website, to Respondent’s site and the sites for which Respondent includes links therein.
- Respondent has never been commonly known by the disputed domain name. He has not engaged in any legitimate business under the domain name, is not a licensee of the Club, and does not own any legitimate trademark rights in any ANGELS mark.
- Respondent is not using the domain name in dispute with any bona fide offering of goods or services. Respondent’s improper use of the domain name does not constitute a bona fide offering of goods or services. Respondent’s use of the domain name is not a “nominative fair use.”
- Respondent’s use of Complainant’s ANGELS marks may not be deemed a legitimate noncommercial or fair use of the domain name. Sites linking to Respondent’s website offer to sell tickets not only to the Angels games, but also to other MLB clubs and other sports.
- Respondent can offer no credible explanation for the adoption of the domain name other than to trade on the fame of Complainant’s ANGELS marks.
faith has routinely been found where, as here, a party’s famous trademark is
registered as a domain name by someone having no connection with that party or
its products. Respondent had actual
knowledge of the ANGELS marks when it registered the domain name at issue. By virtue of the
- Finally, evidence of bad faith may be found in the fact that Respondent offered to sell the <angels.com> domain name for USD 300,000, well above Respondent’s out-of-pocket expenses, to an undisclosed agent acting on behalf of Complainant’s agent MLBAM.
In his Response, Respondent basically contends as follows:
- In February 2005, Respondent purchased the <angels.com> domain name from the previous owner for Korean 25,000,000 won, without knowing about the existence of Complainant, or hearing from the previous owner about any dispute going on. It is not reasonable that Respondent would register or purchase the domain name in bad faith from the outset. Respondent had known the word 'Angels' for tens of years before Respondent became aware of the name of Complainant's baseball team, Los Angeles Angels.
meaning God's messenger, is one of the first words Respondent got to know when
he began learning English as a foreign language. Respondent has been calling his two children
'Angels.' Respondent's daughter calls
herself 'Daddy's Angel.' Respondent purchased <angels.com>, thinking about that familiar word, and not of
ten-odd baseball players who do their job in
- It is recognized that Complainant’s mark is similar to the domain in dispute. However, the word 'Angels' is a general noun, having no discrimination whatsoever. Complainant only has limited rights to the trademark 'Angels,' not being granted exclusive possession rights to the word 'Angels' itself.
owns the service mark 'Angels' for day care center or nursing home business
(classified as no. 43 in
- Complainant's trademark, not being fanciful or arbitrary, is not globally well known as an exclusive brand name and has not gained powerful second meaning, either. Therefore, the scarcely appealing name gives Complainant no ground to claim rights to the domain name which is similar to its trademark even though Respondent's domain name <angels.com> is similar to Complainant's trademark.
- Respondent has never made a sale offer of the <angels.com> domain name to Complainant. Even now Respondent has no idea about who the Complainant's agent is, so it is impossible for Respondent to send Complainant an e-mail offering the domain up for sale. Since the appendix submitted by Complainant does not contain e-mails between Respondent and Complainant's agent, Respondent has not figured out who the Complainant's agent is. It is only possible to guess that someone among those who have communicated with Respondent may have been Complainant's agent.
- Respondent admits that he has intended to sell the domain in dispute since it is true that he answered the e-mails which made a purchase offer. Respondent has received a lot of e-mails proposing sale of the <angels.com> domain name, and he has responded to several of them. Most of the people who sent the e-mails made purchase offer because they acknowledged the value of the <angels.com> domain name. Respondent, too, was well aware of the value of the word 'angels' and that's why he purchased Angels.com for Korean 25,000,000. Presently, Domain names consisting of general nouns are traded at high prices.
- The fact that Respondent has answered several of many e-mails making purchase offers does not reflect that Respondent has intention to disclaim his rights to and interests in the <angels.com> domain name.
- Complainant induced a sale at a really high price by making a purchase offer through his/her agent. Complaintant contacted Respondent with the intention of entrapping Respondent by a trick without revealing who he/she really was. This constitutes failure to meet any duty including of good faith under general laws.
purchasing the <angels.com> domain name, Respondent connected it to a paid search site managed by a third
party, Sedoparking.com administered by Sedo.com which is based in
- When domain owners choose several keywords relating to their web pages, the sites of advertisers who have paid for those matching keywords get linked to the domain pages. Where linked ad sites vary depending on where (in which country) Internet users are. Due to these features of Geo-targeting system of Google, Respondent had never known that Respondent's web page contains links relating to Complainant before Respondent received the notice of dispute. Respondent became aware of the existence of the links to ticket-selling sites of the baseball games that Complainant provides only after Respondent viewed the web page provided as evidence material by Complainant.
web page provided as evidence by Complaintant shows 'For Angel try these
sponsored results’ in its upper part (in
- This shows Respondent's intention of containing, in the web page, information relating to comprehensive meaning of God's messenger, Angel. It also proves that Respondent never attempted to benefit from Complainant's trademark, ANGELS.
- Reviewing Overture Keyword Bid shows that keywords 'Angel' and 'Angels' are purchased by different advertisers. Respondent has recently changed the keyword to 'venture' for visitors who seek information relating to Angel Capital which finances venture businesses. As a result, Respondent's web page displays only those links to advertisers who purchased from Google keyword 'venture.'
- If baseball ticket-selling advertisers should purchase keyword 'venture,' Respondent's web page would show (again) links to ticket-selling sites of the baseball games that Complainant provides as well as those to venture capital.
- For this case to constitute initial interest confusion as Complainant insists, Complainant must substantiate that most visitors to Respondent's page have desire to get information on Complainant. However, material submitted by Complainant fails to provide any evidence to support Complainant's contention on this. Rather, Respondent's research shows that not many people visited Respondent's page with an intention of searching information on Complainant.
- There is a strong possibility that the links to ticket-selling sites relating to Complainant's trademark were results deliberately induced by Complainant, not intended by Respondent.
- The panel is advised to take account that advertisers of those links might have collaborated with Complainant and purchased from Google the keyword 'Angel' on purpose, causing the arguable web page generated. Under these standards, Complainant's actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainant's mark was limited to a narrow field, and that Respondent's registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complaint, but also, Respondent put Complainant on express notice of these facts and that any further attempt to prosecute this matter would be abusive and would constitute reverse domain name "hijack[ing]." Complaint, Annex 2.
C. Additional Submissions
In its Additional Submission of March 27, 2007, made in compliance with The Forum’s Supplemental Rule 7, Complainant contends the following:
- Respondent concedes that the domain name he registered in 2005 is identical to Complainant’s ANGELS marks. That “angels” is the plural form of a general noun has no bearing on the analysis under the Policy. That a term has an ordinary dictionary meaning does not preclude it from operating as a trademark. Respondent does not dispute Complainant’s ownership of the ANGELS marks.
- Respondent seeks to establish rights in the <angels.com> domain name by reliance on a Korean trademark registration he alleges to have obtained in conjunction with the domain name. However, numerous panels have held that the mere existence of a trademark registration does not create a legitimate interest under the policy. The relevant registration cited by Respondent covers “retirement homes” and “day nurseries.” Respondent submitted no evidence to show that he has ever made any use of the mark in connection with such services. Indeed, Respondent concedes the point.
- Respondent makes only vague and unsubstantiated allegations about future plans to run a nursing home business with his wife, again at some unspecified time in the future after she retires. There is no indication of when such retirement is to take place or indeed any concrete evidence of any demonstrable preparations to use the disputed domain name in connection with a nursing home business.
Respondent’s reliance on various cases in which bad
faith was not found because the respondent has no conceivable knowledge of
complainant is misplaced. Unlike in
those decisions, Complainant’s ANGELS marks are famous throughout the world,
In his Additional Submission of March 28, 2007, made pursuant to the Forum’s Supplemental Rule 7, Respondent contends as follows:
- Respondent possesses rights to the Korean service mark 'Angels,' in accordance with the governing law.
alleges that Respondent's right to the mark, which allows for a day-care-center
business, is obscure and fabricated.
However, there are numerous day care centers with the name 'Angel' in
registered the service mark 'Angels' in preparation for his future. For all this, Complainant denies Respondent's
rights and everything which relates to the domain for the purpose of making his
point. Trademarks in
- Considering the additional material submitted by Complainant, there is no disagreement between Complainant and Respondent that Respondent got the ownership of the domain name in dispute in February 2005.
- However, additional evidence material G submitted by Complainant is dated August 23, 2004, which is long before Respondent purchased the disputed domain name. If the web page provided as evidence material by Complainant severely violated Complainant's trademark, Complainant should have claimed his rights, and filing with any dispute resolution service provider using the same evidence material dated August 23, 2004. However, there never were any disputes between Complainant and the previous owner of the disputed domain name. It is not reasonable for Complainant to deny Respondent's rights by using evidence material which occurred long before Respondent bought the disputed domain name.
- There is possibility of insisting bad faith if the domain name is an originally made-up one, but 'Angels' is a general word, which can be registered and used by anyone.
- Generally domain names including general nouns belong to the party who registers them first, and only expressing one's intention of using a domain name grants the person who registers legitimate interest.
- Typically sports teams are called in combination with team owner's or region name. Just like Complainant's team is called 'Los Angeles Angels,' Korean teams are called in the same format, such as Chunnam Dragons, Pohang Steelers and Seongnam Ilhwa. As is shown in evidence material 9 submitted by Respondent, it is clear that Korean public do not use the word 'Angels' for search while expecting to find information about Complainant. If Complainant's trademark should be very famous as Complainant insists, search-related words displayed relating to ANGELS should contain 'Los Angeles Angels' but there is no such thing. This apparently proves that Complainant's trademark is not famous as is insisted.
administered by Germany-based Sedo.com, has a system where Respondent has no
control over which sites get linked. The
links in question are just results in the system involving Complainant, Google
and advertisers. Therefore, Respondent
has no liability for managing usage of trademarks contained in advertisements
that Respondent cannot access or has no way of knowing the existence of. Sedo.com is used by many Korean and foreign
people, being well known enough to get introduced in domain-related news
several times in
- Respondent chose to use Sedo's service not with bad faith to get illegal benefit. An Internet business which makes profits by combining advertisement with Internet users' traffic to various domain names is a lawful business in itself. The view on legitimacy of the businesses which advertise domains using Internet traffic can also be found in Respondent's contention in the Pig.com case.
- Respondent never proposed to Complainant to purchase the domain. Though it is true that Respondent tried to sell the domain in response to sale-proposing e-mails, this move is lawful and does not imply Respondent had bad faith.
The Panel finds that the domain name in
dispute is identical to the ANGELS marks, in which Complainant has rights. The Panel further finds that before receiving
notice of the present dispute Respondent registered the ANGELS service mark in
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
By its use in commerce since 1961 and various trademark registrations before the USPTO, Complainant has evidenced that it has rights in the ANGELS mark. The Panel finds that the domain name in dispute is identical to the ANGELS mark, since the addition of the “.com” gTLD is not apt to distinguish it from the trademark.
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 <angels.com>, and not <daddysangel.com>.
Respondent’s reliance on his service mark registration for
the ANGELS mark in
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
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 firstname.lastname@example.org, D2001-0803 (WIPO Aug. 22, 2001). Here, Respondent’s registration
was not made in any country of convenience, but in
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.
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
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.
Complainant having failed to establish the second and third elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Although Complainant was ultimately unsuccessful, it is apparent that it did not lack good faith for bringing its Complaint. Accordingly, the Panel denies Respondent's request for a finding of reverse domain name hijacking.
Roberto A. Bianchi, Chair Panelist
Judge Richard DiSalle, Panelist
Sean (Myung-Suk) Choi, Panelist
Dated: May 14, 2007
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