British Sky Broadcasting Group Plc., British Sky Broadcasting Limited v. Anti-Globalization Domains Case No. D2003-0912
1. The Parties The Complainants are British Sky Broadcasting Group Plc., (hereinafter referred to as the First Complainant) and British Sky Broadcasting Limited (hereinafter referred to as the Second Complainant), both established at Isleworth, United Kingdom, represented by Ashurst Morris Crisp, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Anti-Globalization Domains, Bronx, New York, United States of America.
2. The Domain Name and Registrar The disputed Domain Name (“Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2003. On November 14, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 14, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on November 20, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2003.
The Center appointed Charles Gielen as the sole panelist in this matter on December 23, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background The Second Complainant carries on business, inter alia, as a broadcaster and provider of digital satellite television services principally in the UK and Eire and operates a digital satellite subscription television service, Sky Digital. Prior to the launch of its digital service, the Second Complainant and its predecessors in business operated an analogue satellite service since 1989. As of September 30, 2003, the Second Complainant had over 7 million subscribers to its Sky digital satellite television services and as of August 31, 2003, provided Sky channel to over 3.8 million households by cable.
There are currently four "SKY SPORTS" branded premium subscription sports channels offered on the Second Complainant 's service ("SKY SPORTS 1", "SKY SPORTS 2", "SKY SPORTS 3" and "SKY SPORTS EXTRA" (collectively the "Sky Sports Premium Channels")). The first Sky Sports channel was launched in 1991, in analogue. The four Sky Sports Premium Channels now offer a wide range of sports-related programming, including exclusive live broadcasts of football, rugby, cricket and golf. The Second Complainant currently has in excess of 7 million subscribers to one or more of the Sky Sports Premium channels. In addition, the Second Complainant has a sports news channel branded “SKY SPORTS NEWS”. One or more of the Sky Sports branded channels is currently available to 11.75 million multi-channel households (via satellite, cable and digital terrestrial).
The Second Complainant also operates two services at the web site “www.skysports.com”; (i) a subscription broadband service offering, amongst other things, clips of sports events, and (ii) a free web based sports news service designed to offer news and entertainment information. These complement the Second Complainant’s Sky Sports Premium Channels and Sky Sports News channel. In this Complaint, the Sky Sports Premium Channels, Sky Sports News channel and online services offered at “www.skysports.com” shall be referred to collectively as the “Service”.
The “www.skysports.com” web site is intended to appeal to the Second Complainant’s broadcasting subscribers and members of the public interested in sports news generally, and acts to enhance the Second Complainant’s brand image in the area of quality sports entertainment. The “www.skysports.com” site received 75 million page impressions ("hits") in October 2003, making it the most popular sports site in Europe by number of hits. The Second Complainant also broadcasts a number of "SKY"-branded television channels (such as "SKY MOVIES", "SKY NEWS", "SKY ONE" and "SKY TRAVEL").
The Complainants are the proprietor of several hundred applications for and registered trademarks incorporating the term “SKY” in over 70 jurisdictions. Moreover, 26 registered trademarks and 25 applications in 23 jurisdictions worldwide specifically incorporating the term “SKY SPORTS”.
The Complainants are also the owner of a large number of domain names including the trademarks "SKY SPORTS" and "SKY", such as registered on March 19, 1998, and registered on December 1, 1999.
The Complainants have devoted very substantial resources to promoting the Service and developing the "SKY SPORTS" trademark and brand. By way of example, since launch of the “www.skysports.com” web site, revenue received from advertising on “www.skysports.com” has exceeded 7 million pounds sterling.
As a result of its activities, the Complainants have acquired substantial and valuable goodwill and reputation in relation to the Service which is represented by the "SKY SPORTS" mark. The Second Complainant has become one of the leading providers within the sports broadcasting and online entertainment and news services industry in the UK and Eire and worldwide.
Due to the success of the Complainants' media enterprises, the "SKY SPORTS" mark has become a famous or well known trademark in the UK, Eire and internationally. There can be no question that the Complainants have rights in the "SKY" and "SKY SPORTS" trademarks and that these pre-date the Respondent's registration of the Domain Name.
It is submitted by the Complainants that the Respondent's contact details are fictitious. Internet searches conducted on the Complainants' behalf have found no reference to a company or organization with “Anti-Globalization” in Bronx or anywhere else in New York.
The Domain Name presently resolves to the web site “www.abortionismurder.org”, which is a web site containing graphic images of aborted fetuses which are calculated to cause distress and offence. Copies of the home page of the web site as viewed on October 20, 2003, and November 13, 2003, are provided as Annex 4. The registrant of the domain name appears to be based in Florida, United States of America. Copies of extracts from “www.honestsql.net” as viewed on October 20, 2003, are provided as Annex 5.
5. Parties’ Contentions A. Complainant The Domain Name incorporates as its dominant element the Complainants' registered trademark "SKY SPORTS". The only additional matter in the Domain Name is the prefix “www”, which does not serve to distinguish the Domain Name from the Complainants' registered and unregistered trademarks. The Domain Name and the trademarks are identical or at the very least confusingly similar. Reference is made to Harrah's Las Vegas, Inc v. Grand Slam Co. NAF Claim No. 114339 in which the respondent party had registered . Therefore the Domain Name is confusingly similar to the trademarks of the Complainants.
Furthermore the Complainants argue that the Respondent has not rights or legitimate interests in the Domain Name. To the Complainants’ knowledge having undertaken searches, the Respondent does not have any trademark or other rights in the names "SKY SPORTS" or "WWWSKYSPORTS". There is no evidence that the Respondent or any business of the Respondent is commonly known under the Domain Name. Indeed, in light of the Complainants' rights as at the date of registration of the Domain Name it is submitted that it is inconceivable that the Respondent could have any rights or legitimate interest in the Domain Name.
Finally the Complainants argue that the Domain Name is registered and is being used in bad faith. In this respect the Complainants state that the "SKY SPORTS" trademark had already achieved notoriety by November 2001, when the Domain Name was registered, which Domain Name is in active use, linking to a web site service that contains graphic images of aborted fetuses and which has nothing whatsoever to do with the Complainants' business. Instead, this appears to be a cynical strategy by the Respondent to seize the attention of “www.skysports.com” users who accidentally omit the period after “www”. The Respondent's Domain Name takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet. In all the circumstances, it is inconceivable that the Respondent can have chosen a name such as the Domain Name in ignorance of the Complainants' rights.
In the circumstances, the Complainants conclude that the Domain Name was chosen and is being used both for the general reason that it incorporates the Complainants' well known SKY SPORTS mark, in which substantial goodwill resides in the UK and elsewhere, and for the particular reason that users seeking to visit the Complainants' web site will from time to time mistakenly omit the period between the www and the Complainants' domain name, thus mis-directing to the Respondent (or its associated company) persons intending to use the Complainants' service.
Previous WIPO decisions involving registrations believed to be associated with or aliases of the Respondent provide clear evidence of a pattern of conduct of registering and using domain names in bad faith. The circumstances of those cases are closely analogous to the present case and suggest a link between those registrants and the Respondent.
Thus, Panels constituted under the Rules have made decisions to transfer domain names registered, variously, by “John Barry”, “Domains World”, “Domains for Sale Inc”, “Buy this Domain” and “Best Domains”, often quoting the same address (being the address given by the Respondent). In each case, the registrant had registered a variation of a well-known trademark, typically by omitting the period between “www” and the rest of the domain name, as with the Domain Name. The Panel has consistently held that such registrations were in bad faith, and should find bad faith here for the same reasons. In Prada S. A. v. Domains For Sale Inc., WIPO Case No. D2002-0512 the Panel observed:
“Respondent is on a crusade to extort money from trademark owners by linking domain names comprising their famous trademarks to anti-abortion sites whose subject matter is politically, morally, and socially very sensitive. The Complainant has nothing to do with abortion rights, and has never taken a stand on this issue.”
The Respondent was given the opportunity to refute the Complainants' allegations in correspondence but has chosen to make no response to the Complainants' letter and email of October 8, 2003. This is consistent with the Respondent's conduct with regard to the previous decisions. It is therefore submitted that the Administrative Panel should draw the obvious inference that this is another example of a high profile domain name being hijacked in such fashion for the Respondent's own bad faith purposes in the knowledge that the material on the site it is directed to is at the least politically, morally and socially very sensitive.
B. Respondent The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel decides that the domain name is confusingly similar to the trademark SKY SPORTS. The mere fact that the Domain Name contains the letter string "www" is of no relevance, since this letter string is of a generic nature.
B. Rights or Legitimate Interests
The Panel concludes that the second criterion is fulfilled. The following circumstances in particular are relevant in this respect:
a. The Respondent did not file a response.
b. The Respondent provided the Registrar with false contact details, which is not the behavior of someone who has a particular right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
With respect to the alleged use and registration of the Domain Name in bad faith the Panel first of all decides that none of the particular circumstances evidencing bad faith as mentioned in paragraph 4(b) of the Policy occur in this particular case. However, as the text of this provision clearly says, these circumstances are without limitation. Registration and use of a domain name in bad faith can therefore be established on the basis of a combination of other factors and circumstances of the matter. There is indeed no evidence of an intention on the side of the Respondent to attract for commercial gain Internet users to its web site as provided paragraph 4 (b)(iv) of the Policy. There also is no evidence that the Respondent registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy). However, it is clear that by operating a web site which shows revolting pictures of aborted fetuses confusion is created with the Complainants’ trademark and their business and good will which have nothing to do with an anti-abortion position. This could prejudice the interest of the Complainants’ trademarks. Furthermore it is clear from the evidence that apparently the Respondent engaged in a pattern of conduct consisting of applying for similar domain names containing reputed trademarks. The Panel therefore concludes that the Domain Name is registered and is used in bad faith.
7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the First Complainant as requested by the Complainants.