Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gemstar-TV Guide International, Inc., Pasadena, CA, USA ("The Complainant") represented by David J. Steele, of Christie, Parker & Hale LLP. The Respondent is Kim Taekyeon, Donggu Taegu, Korea ("The Respondent").

The domain name at issue is <gemstar-tvguide.com> registered with Netpia.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.

Kyung-Han Sohn sits as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 20, 2001; the Forum received a hard copy of the Complaint on April 23, 2001.

On May 2, 2001, Netpia.com confirmed by e-mail to the Forum that the domain name <gemstar-tvguide.com> is registered with Netpia.com and that the Respondent is the current registrant of the name. Netpia.com has verified that the Respondent is bound by the Netpia.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 May 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gemstar-tvguide.com by e-mail.

A timely response was received and determined to be complete on May 22, 2001.

On June 4, 2001, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Kyung-Han Sohn as Panelist.

On June 7, 2001, this panel issued an order that, pursuant to ICANN Rule 11, and in consideration of the fact that the Respondent’s registration agreement is in Korean and of the circumstances of the administrative proceeding, the Complaint and required documents shall be submitted by the Complainant to the Forum in English and Korean and be transmitted to the Respondent and the Respondent may submit the Response in Korean or English and other communications to and from the Forum shall be in English.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. The Complainant

B. The Respondent

It is the decision of the undersigned as follows:

Paragraph 15(a) of 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Complainant has rights in the GEMSTAR mark based on its U.S. and Korean trademark registration, as well as in the TV GUIDE mark based on its U.S. trademark registration, and has continued to do business with both marks. Furthermore, from the time of the merger, the Complainant decided its trade name as GEMSTAR-TV GUIDE and used such name so far in actual business. Therefore, it should be concluded that the Complainant has the legitimate rights to trademarks of GEMSTAR, TV-GUIDE and trade name of GEMSTAR-TV GUIDE.

The domain name registered by the Respondent is a combination of the registered trademarks of the Complainant, i.e., GEMSTAR and TV GUIDE, and is identical with the trade name of the Complainant’s company following the merge. Although the Complainant did not register a GEMSTAR-TV GUIDE trademark, both GEMSTAR and TV GUIDE are distinctive marks well known to consumers not only in the U.S., but all around the world. Moreover, the news of the merger of the Complainant’s company was broadcasted and reported globally.

Therefore, it should be concluded that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered marks. See Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

In addition, there is a large possibility that Internet users who intend to access the Complainant’s website may access the disputed domain name registered by the Respondent, and this will likely cause confusion by wrongfully leading the users to believe that the Respondent is the identical or affiliate company of the Complainant’s. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access the Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship exists).

The Respondent has no rights or legitimate interests to the domain name in question because the Respondent is not commonly known by the domain name, nor has the Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the Respondent has no rights or legitimate interests in domain names because it is not commonly known by the Complainant’s marks and the Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Respondent responded that he has significantly invested in purchasing a server and moving offices in order to use the disputed domain name. Contrary to such argument, however, the disputed domain name had never been actually opened or operated under its own name, and was only accessible through free domain name forwarding services. The accessed website of the Respondent, besides, was only classified with such categories as shopping mall, sex, B to B, B to C, games, etc. and did not have any actual content except for the phrase "Succeed on your business!!"

The Respondent had sent an initial e-mail letter to the Complainant explaining that he selected the disputed domain name because GEMSTAR is a compound of the Korean word for ‘fun’ and ‘movie star’, but in the response to the complaint, claimed that GEMSTAR is a compound of ‘game’ and ‘game star’ and that he indeed has legitimate interests in respect of the domain name. Such arguments by the Respondent are not consistent, and even if these arguments were true, the Respondent still failed to clearly explain his legitimate interest in the disputed domain name, where both the terms GEMSTAR and TV GUIDE are included.

And evidence presented fails to demonstrate that the Respondent, before any notice to it of this complaint, either used or made demonstrable preparations to use the disputed domain name.

In sum, it should be concluded that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.

Because the disputed domain name is identical with the trade name of the merged company of the Complainant, and also because both GEMSTAR and TV GUIDE are well known trademarks registered and used in various nations including the U.S. and Korea, the Complainant should be deemed as having legitimate rights with respect to the registration and use of the disputed domain name. Therefore, it should be acknowledged as bad faith for the Respondent who has no relation whatsoever with the Complainant to register the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than the Complainants suggests ‘opportunistic bad faith’").

Furthermore, the Respondent was already aware of and knew both GEMSTAR and TV GUIDE marks at the time of the registration of the disputed domain name, and it is safe to say that the Respondent accordingly knew that the disputed domain name would be the new trade name of the Complainant after the merge. Hence, the Respondent registered the disputed domain name under his name while he was well aware of the fact that such registration would deceive and cause confusion, and this clearly constitutes bad faith. The fact that the Respondent registered the disputed domain name just hours after the press release of the Complainant’s merger is solid support to such finding. See Marconi Commerce Sys., Inc. v. Evans, FA 0093560 (Nat. Arb. Forum Mar. 15, 2000) (bad faith was found when the Respondent registered the domain names shortly after Complainant’s adoption and roll out of a trademark and name in the Respondent’s home town); See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

The Complainant demanded the return of the disputed domain name under the condition that the Complainant pay back the cost incurred by the Respondent in registering the domain name. The Respondent, although not showing any direct interest in selling the disputed domain name to the Complainant, rejected such proposal on the grounds that he had spent significant amount of money in registering and maintaining the disputed domain name. The Respondent is passively holding the disputed domain name while not actually using it. The fact that the Respondent is refusing to return the disputed domain name to its legitimate rights holder and continuing to passively hold on to the domain name shows that the Respondent registered the domain name with the intention to disrupt the business of the Complainant and this should be acknowledged as support for the Respondent’s bad faith. See Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

Having fulfilled all three requirements of the paragraph 4(a) of the Policy, it is the decision of the Panel that the relief sought be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, <gemstar-tvguide.com>, be transferred from the Respondent to the Complainant.