Viacom International Inc. v. Beomjoon Park

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AT&T Corp v. Beomjoon Park

Case No. D2001-0133

Viacom International Inc. v Beomjoon Park

Case No. D2001-0220

1. The Parties

These two Complaints involve the same domain name and the same Respondent. Accordingly, both have been considered together and one decision given. It is commonplace in many jurisdictions for a Court to consider two similar cases brought by different claimants against the same respondent, involving the same subject matter. One judgment is given in such cases, covering both Complaints. There is nothing in the UDRP to forbid such a procedure in an administrative proceeding under that Policy.

The First Complainant is AT&T Corp, a New York corporation having its principal place of business in Basking Ridge, New Jersey, U.S.A. It is represented by Mr A.C. Raul of Sidley & Austin of Washington DC, U.S.A. The Second Complainant is Viacom International Inc., a New York corporation with its principal place of business in New York, NY, U.S.A. It is represented by Mr Dennis Wilson of Keats McFarland & Wilson of Beverley Hills, California, U.S.A.

The Respondent in both Complaints is Beomjoon Park of 4/703 Jamwon Hanshin Apt., Jamwon, Seocho, Seoul, Republic of Korea. The Respondent has filed no Response to either Complaint and is not represented.

2. The Domain Name and Registrar

The domain name at issue in both Complaints is <attviacom.com>. The domain

name is registered with Network Solutions Inc., of Herndon. Virginia, U.S.A.

("NSI").

3. Procedural History

The First Complaint was received on January 24, 2001, (electronic version)

and January 26, 2001, (hard copy). The Second Complaint was received on

February 6, 2001, (electronic version) and February 8, 2001, (hard

copy). Both were received by the World Intellectual Property Organization and

Mediation Center ("WIPO Center"). The Second Complaint was filed

with knowledge of the First Complaint.

On January 29, 2001 and February 15, 2001, the usual requests for

Registrar verification were transmitted in respect of each Complaint by the

WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant

as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with NSI.

Confirm that the person identified as the Respondent is the current registrant

of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es), available in NSI’s WHOIS database for

the registrant of the disputed domain name, the technical contact, the administrative

contact and the billing contact for the domain name.

Indicate the current status of the domain name.

On January 30, 2001 and February 15, 2001, NSI advised the Center

on each occasion that:

NSI had received a copy of the Complaint from the Complainants.

NSI is the Registrar of the disputed domain name.

The Respondent at the address above is shown as the "current registrant"

of the disputed domain name.

The Respondent is also shown as the administrative and billing contact.

NSI’s 5.0 Service Agreement applies to the domain name.

The domain name registration is in "Active" status.

NSI has currently incorporated in its agreements the Uniform Domain Name Dispute

Resolution Policy adopted by the Internet Corporation for Assigned Names and

Numbers ("ICANN").

The advice from NSI that the Respondent is the "current registrant"

of the domain name in question and that the domain name is in "active"

status indicates the Respondent has not requested that the domain name at issue

be deleted from the domain name database. The Respondent has not sought

to terminate the agreement with NSI. Accordingly, the Respondent is bound by

the provisions of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN

policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the First Complaint satisfied the formal requirements

of the Uniform Policy and the Uniform Rules, the WIPO Center, on February 1,

2001, transmitted by post-courier and by email a Notification of Complaint and

Commencement of Administrative Proceeding to the Respondent. A copy of the First

Complaint was also emailed to the Registrar and ICANN. The same process was

followed with the Second Complaint commencing February 19, 2001.

The Complainants elected to have their respective Complaints resolved by a

single panel member: Both duly paid the amount required to the WIPO Center.

The Respondent was advised that a Response to both Complaints was required

within 20 calendar days. The Respondent was advised that any Response should

be communicated, in accordance with the Rules, by four sets of hard copy and

by email. No proper Response was filed by the Respondent to either Complaint.

In respect of the First Complaint, there were communications between WIPO

Center, the respondent and his representative in Gangseogu, Republic of

Korea, a Mr. Sang-Wouk Woo. A document in Korean was forwarded on February 19,

2001. This may have been a Response. The Respondent and his agent were advised

by WIPO Center that English was the language of the administrative proceeding

and a translation of the document in Korean was requested. No translation was

forthcoming. A Notice of Respondent Default was issued in respect of the Second

Complaint on March 16, 2001.

On March 5, 2001, the WIPO Center invited the Honorable Sir Ian Barker

QC of Auckland, New Zealand to serve as Sole Panelist in both cases. It

transmitted to him statements of acceptance and requested declarations of impartiality

and independence.

On March 5, 2001, the Honorable Sir Ian Barker QC advised his

acceptance and forwarded to the WIPO Center his statements of impartiality and

independence. The Panelist finds that the Administrative Panel was properly

constituted in accordance with the Rules and the Supplemental Rules in respect

of each Complaint.

On March 26, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker

QC by courier the relevant submissions and the record. In terms of Rule 5(b),

in the absence of exceptional circumstances, the Panel was required to forward

its decision by April 8, 2001.

The Panel has independently determined and agrees with the assessment of WIPO

Center that each Complaint meets the formal requirements of the Rules for Uniform

Domain Name Dispute Resolution Policy as approved by ICANN on October 24,

1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language

of the registration agreement. On March 26, 2001, the Respondent complained

to WIPO Center about the documentation being in English, which language he claimed

he did not understand. The Panel comments on these allegations.

(a) The Respondent chose both to avail himself of registration of a domain

name in an English-speaking country and to enter into a contract that requires

disputes relating to that domain name to be conducted in the English language.

(b) Some of the Respondent’s correspondence and the statements on his website

which speculated about a merger between the two Complainants show some familiarity

with the English language.

(c) The Panel takes judicial notice from other WIPO cases and from general

knowledge that many persons in Korea are able to speak English and that suitable

translators exist in that country.

Accordingly, like the learned Panelist in Viacom International Inc. v Sung

Wook Choi et enor (WIPO Case No. D2000-1114),

this Panel considers that there has been no breach of natural justice to the

Respondent.

4. Factual Background

The First Complainant, AT&T, has been selling telecommunication goods and

services for over a century under the name "AT&T" or phrases that

combine "AT&T" or "ATT" with other words. It has invested

hundreds of millions of dollars in many countries, including Korea where the

Respondent operates. In 1995, it received a US$540 million contract to

supply wireless network equipment to Korea Mobile Telecom with 6 million

customers. In 1997, it designed telecommunications at Indon International Airport.

It also has websites aimed at Korean internet users.

The First Complainant has rights to a U.S.-registered trademark for the mark

"AT&T", which was registered in Korea on June 3, 1986. It

has filed in the U.S. for the trademark ATT.COM and owns a domain name <att.com>.

It is well known that an ampersand is not allowed as part of a domain name.

The AT&T mark is known worldwide.

The Second Complainant Viacom started in 1971 handling CBS domestic cable television

interests and syndications worldwide. Through a wide array of businesses and

different forms of media, it operates extensively in many countries.

The Second Complainant has owned and still owns trademark registrations for

the Viacom mark in 80 countries, including the United States and Korea.

It has been active in Korea for a number of years. It has used the Viacom mark

both on the internet and in the credits in broadcast programs and other advertisements.

The mark "Viacom" was first registered in the United States in 1975

and in Korea in 1996.

The Respondent registered the domain name <attviacom.com> on January 12,

2000. In his response to the First Complainant’s series of "cease

and desist" letters, which began on May 15, 2000, and in subsequent

emails, the Respondent sought to extract payment from the First Complainant

in return for a transfer of the name. He made no response to the Second Complainant’s

"cease and desist" letter of December 20, 2000. On January 8,

2001, the Second Complainant learned that the Respondent had sought to auction

the domain name on the internet under the heading: "Will AT&T and Viacom

be merged?". He sought an initial bid of $100,000.00.

5. Parties’ Contentions

The Complainants allege that the domain name, by combining two famous marks

known worldwide, creates confusing similarity with the marks of both of them.

A finding of confusing similarity cannot be avoided by adding a common or generic

term to a mark (see Viacom et al v Affinity Multimedia, WIPO

Case No. D2000-1253). Reference was also made to WIPO

Case No. D2000-0553, where the transfer to AT&T was ordered of the domain

names <attmexico.com> and <att-latinamerica.com>.

Both Complainants submit that visitors to the website could be confused into

thinking that the domain name is a site owned and maintained by them jointly

to promote products and services. Reference was also made to this Panelist’s

decision in AT&T Corp v Tala Alamuddin (WIPO

Case No. D2000-0249), in which transfer was ordered of the name <ATT2000.com>.

The Respondent has no legitimate interest in the domain name. None has been

asserted.

The Respondent has registered and is using the name in bad faith. His conduct

indicates that he registered the domain name either to sell it for a profit

or else to "lock it up" against any future merger of the Complainants.

They point to the WIPO Case No. D2000-0915,

Compaňia de Radiocomuniçationes Movites.

and BellSouth Corporation v Bolinhas. There, the combination of two

famous marks Movicom and BellSouth into a domain name by a party unconnected

with either, was taken to show bad faith registration. There is also the evidence

of the Respondent’s clear wish to sell the name and/or to auction it.

The Respondent made no submissions in respect of either Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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."

The burden for the Complainants, under paragraph 4(a) of the ICANN Policy,

is to show:

- That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainants have rights;

and

- That the Respondent has no legitimate interests in respect of the domain

name; and

- That the domain name has been registered and used in bad faith.

The domain name <attviacom.com> in the judgment of the Panel, is confusingly

similar to the marks of both Complainants. The combination of two famous marks

has a great potential to confuse internet users into believing that the website

is some sort of co-operative venture between the Complainants.

The Panel also refers to SMS Demag v Seung Gon Kim (WIPO

Case No. D2000-1434), where the name <SMSdemag.com>, a combination

of the famous marks of two merging companies, was ordered to be transferred

to the merged entity. Likewise London Metal Exchange Ltd v Hussain (WIPO

Case No. D2000-1388,) and Pharmacia & Upjohn v Monsantopharmacia.com.

Inc. (WIPO Case No. D2000-0446).

The Panel decides that the Respondent has no rights or legitimate interests

in the domain name at issue. The Respondent has never suggested to the contrary.

The Panel so decides. The Respondent has offered no evidence that he is known

by the disputed domain name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site or other on-line location,

by creating a likelihood of confusion with the complainant’s mark as to

the source, sponsorship, affiliation, or endorsement of your web site or location

or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the

above.

The Panel considers that the Respondent has registered and used the domain

name in "bad faith" for the reasons set out in the summary of

the Complainants’ submissions. There has clearly been a cynical attempt by the

Respondent to use in a speculative way a combination of two famous marks in

the entertainment industry. Bad faith registration and use are clearly shown.

The Respondent has either ignored the "cease and desist" letters sent

by one Complainant or replied to the other with a cheeky offer to sell and/or

as a meritless justification for his conduct. He must have known of the fame

of the Complainants’ mark at the time of registration. His continued use is

in bad faith, is also obvious from his attempt to auction the name.

Accordingly, for all the various reasons discussed above, the Panel finds that

the domain name has been registered and is being used by the Respondent in bad

faith.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar

to the trademark to which the Complainants both have rights;

(b) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(c) That the Respondent’s domain name has been registered and is being used

in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain name <attviacom.com> be cancelled.

Hon. Sir Ian Barker QC

Sole Panelist

Dated: March 30, 2001

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