Mr. John Berryhill has just won another UDRP this time on a .TV domain, Channel.TV
The Complaint was brought by Channel Television Limited of St Helier, Jersey, United Kingdom of Great Britain whom despite finding that they had “unregistered trademark rights” to the domain, found no bad faith by the registrants.
Here are the relevant facts and findings of the three member panel:
“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.”
“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.”
“”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. ”
“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.
As to bad faith the panel found:
“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.”
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.”
I don’t know about this one.
No registered trademark.
Generic term
Panel finds “the Complainant has brought little evidence that the Respondent has no rights or legitimate interests in the disputed domain name”
Well actually the panel found no evidence that the “Respondent has no rights or legitimate interests in the disputed domain name”.
So if this is not an attempted reserve hijacking what is?
Congrats to John and Legacy Fund LLC the domain holders.
Generic, brandable, one-word . tv’s are selling for $50K+, with many of these sales not being reported to dnjournal
Nice to see a good decision for a change, although not awarding reverse hijacking is ridiculous and does not discourage people from making frivolous claims for domains, until reverse decisions start being awarded we will see many more UDRPs for generic names.
@Together.tv i am a .tv fan and have been into .tv since 2006 and done ok but statements like that are just crazy, yes there have been a number of sales in that range but to say “Generic,brandable ,one word .tvs are selling for $50k + is ridiculous, there is money to made in .TV agreed but 50k sales are certainly not the norm and to say otherwise is misinformed at best.
“Generic, brandable, one-word . tv’s are selling for $50K+, with many of these sales not being reported to dnjournal”
I have seen other statements like this in the past.
The same can be said for any extension. It is just a way to prop an extension up that has a lack of actual reported sales.
On a side note, what is even the point of RDNH? As far as I know it doesn’t come with any financial gains for the responder, or punitive actions for the person filing the complaint.
Brad
Brad
Just to get it on record so it hopefully can be used against the complainant like a past UDRP loses are used against domain holders.
“Just to get it on record so it hopefully can be used against the complainant like a past UDRP loses are used against domain holders.”
The deck is so stacked against domain owners when it comes to UDRP.
If it is so cheap to buy a lottery ticket (UDRP) to go after a premium generic domain, then there should be real penalties for those that abuse the system.
Brad
Brad
Phil from the ICA is working on UDRP reform, ICANN is now opening it up for discussion.
Of course TM groups want more protection so it will be dicey.
Bring your checkbook to the table and support them.
“If it is so cheap to buy a lottery ticket (UDRP) to go after a premium generic domain, then there should be real penalties for those that abuse the system.”
That argument works both ways. It is cheap to register a domain name, too, and legitimate UDRP complainants have to pay at least $1500 to go after them.
“That argument works both ways. It is cheap to register a domain name, too, and legitimate UDRP complainants have to pay at least $1500 to go after them.
”
UDRP was not designed for what it has become. It was designed for flagrant abuse of TMs.
It was not designed for a company to pay $1500 to potentially win a generic domain worth a substantial amount of money.
The responder has no financial gain in defending a generic domain. It only costs them money.
The disputing party could potentially win a high dollar generic domain on the whim of the panelist.
Brad
Brad
all processes at times get abused and game played
If you want to make a change its not going to happen by bitching here
Join the ICA get involved in the discussion and be apart of the solution
This never had any merit from the start so its good to see they got it right. The term ‘channel’ as used by the TV station in question is purely geographic so anyone with a rudimentary knowledge of past cases would know that this would probably fail on that basis alone, not to mention the alternative highly generic meaning of ‘channel’ in a TV context. Do their lawyers still have jobs??
They should have just made a decent offer to start with instead of take the udrp risk. Seems like an irrational thing to do imo since they obviously ‘need’ the name and now they may not get it for any price they can afford.
@ MHB
One person, or small group of people can’t compete with ICANN and corporate interests.
The only response average people have is “bitching”.
Brad
Its interesting to me that they gave them the first prong as tm law suggests that the extension adds nothing to distinguish the mark. Viewed in that light is “channel” identical or confusingly similar to channel tv. I think that by allwing them the first prong they could not level a rdnh ruling. I have no idea whether the complainant was represented or not as I can not find the case but Berryhill must just love these types of complaints because he could do the response in his sleep. To the eductated observer it appears to be an rdnh case but personally I am not certain this it was. Was the complainant represented? and given that the panel decided the mark was confusingly similar you can almost conclude they wont give you the rdnh. Having said that, definitely a loser case, easily but well defended
Brad is spot on.
A major company, even a poxy company with 10 people working for it doesnt have to think twice about rolling the dice at £1,000 or $1,500 or whatever your soon to be worthless currency is at the moment.
There should be a penalty for losing a UDRP for the claimant comenserate to the size of organisation that brings the case in the first place.
Berryhill (nice guy thanks for answering my questions in the past) says that there are legit claims that have to pay $1,500, this is true however:
Having read the “case law” (lol) it would seem that a UDRP is a nice dice roll for a company wanting to get ahold of a domain. The odds of this dice roll become a coin flip should it be a one member panel.
So anyway back to the point. A % value of the domain or a fine proportionate to the market cap of the company should be the cost implication of filling a UDRP that is total bollocks.
$1,500 is one tenth the budget that a UBS (insert decent bank here) would expect the dinner bill to come to of a broker taking out a decent client.
Sorry for the spelling etc, I am in white wine heaven.
what’s interesting in some of these cases is what the complainant is really after. what is their true intent?
one could argue this is another case of a company with very limited geographic reach (a local tv station) trying to obtain global reach. not by registering or purchasing a domain name. but by udrp. their local customers would only account for a small amount of traffic. but with a generic name like channel, they will gain a stream of traffic from outside their jersey customer base and, as it happens, additional revenue as their ads reach more consumers.
or one could argue they are only concerned with their local customers typing in the name of their company and not being directed to the company’s website. if by chance users in other localities around the globe also type that name and end up being directed to one company’s website in jersey, then that’s not what the company intended.
so which is it?
the reason we have this issue is because the naming system by design encourages conflict. so we have to pick a good guy and a bad guy. it can’t be the system that’s bad, it’s got tobe the people using it.
there are myriad companies using the name “channel”. in most cases they will be using different ip addresses, which for unicast must be unique. (incidentally these numbers do give a good hint as to their geographic location, similar to a telephone country code or area code.) but there can be only one channel domain name in any given registry. of course there can be many variations to confuse the human eye or ear. and lo and behold, people register them. shock and horror.
even vanity phone numbers have limited geographic reach. 1-800-whatever only reaches a geographically limited audience.
so why do we keep using this domain name system, where the namespace is more limited than the numberspace and where the namespace is highly polluted? i’ve never seen a satisfactory answer. it was decided in the 80’s before most of us where even using the internet. it was decided when there were only a few thousand users, or maybe less.
but we can trust their decision. what worked for a few thousand works for a few hundred million too.
everyone knows it’s impossible to memorise a phone number. and everyone knows keeping a list of important phone numbers is incredibly difficult.
numbers are terrible. what were the telco’s thinking? everyone constantly dialing wrong numbers every day. total chaos.
now you can use your mouse or touchscreen. click or tap on something. so easy. and there are companies to help you remember all your important contacts. you don’t have to remember anything. they’ve got you covered. isn’t that cool? in fact, your contacts list has been distributed to internet marketers too, so there’s a backup copy. stored in “the cloud” of course. neat, huh?
yeah, we should stay away from numbers. numbers just lead to disputes. do you know how many lawsuits were filed by people wanting the same telephone number? or by companies with similar numbers that people misdial? or how about the countless trademarks on numbers?
names are the way to go.
First of all congrats to Mr. Berryhill, he is the “best of the best”!!!!!
Channel.tv is a great name that is generic in nature, and maybe they will come back and make a 100K + offer.
Also, these BS cases, where clearly Channel.tv is “not trademarked”, the panel/judge should award damages to the defendents. This will cause these companies from filing this BS claims.
Thanks, Jim
I dont think you can call it reverse domain hijacking – “The Panel therefore finds that the Complainant has established the first element of paragraph 4 (a) of the UDRP Policy.”
Yaron
Despite the fact that the complainant didn’t have a registered TM
“Berryhill must just love these types of complaints because he could do the response in his sleep”
It’s a common enough set of facts that I cringe at blog titles like this one. The facts are what win or lose these things. All I do is explain them in terms that make sense to the panelists.
The complaint was better written than most, though, and might have been persuasive to a panelist who wasn’t thinking critically. Although, it was written in the “high and mighty” blustery blowhard style that too many lawyers think is impressive. But what keeps me up at night with these kinds of cases is wondering if a response was really needed at all.