WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The British Broadcasting Corporation v. Jaime Renteria

Case No. D2000-0050

 

1. The Parties

The Complainant is The British Broadcasting Corporation, a body corporate established by Royal Charter in the United Kingdom, having its head office in London. The Respondent is Jamie Renteria, an individual of Caracas, Venezuela.

 

2. The Domain Names and Registrar

The domain names the subject of this Complaint are:

• bbcdelondres.com
•bbcenespanol.com
•bbcenespanol.net
•bbcenespanol.org

The Registrar of each of these domain names is Network Solutions, Inc of Herndon, Virginia, USA.

 

3. Procedural History

Issuance of Complaint

On February 9, 2000, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, by email dated February 10, 2000.

Confirmation of Registration Details

A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on 10 February, 2000. By email to the WIPO Center on 11 February, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain names the subject of the Complaint; confirmed that the current registrant of those domain names is the Respondent; informed that the administrative and billing Contact for those domain names is the Respondent, that the technical and zone Contact for those domain names is Bernardo Beyer, and provided postal, facsimile and email contact details; and informed that the status of bbcdelondres.com is "active" and that the status of the other domain names in issue is "hold". The Registrar also confirmed that its 4.0 Service Agreement is in effect. Amongst other things, that agreement provides that the Respondent as registrant of the domain names agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.

This Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

Notification to Respondent

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent on February 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding, to the postal, facsimile and email contact details of the Respondent, and to the email address and facsimile number of the Technical Contact for the domain names, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date. Courier records show that the courier dispatch to the Respondent was received by the Respondent on February 22, 2000. Records show that the facsimile and email transmissions to the Respondent and the Technical Contact were received by them. On February 23, 2000 a copy of the Complaint (which had not been included in the facsimile transmission of February 17, 2000) was sent to the Respondent and the Technical Contact. Records show that this transmission was received by the Respondent.

This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

On February 25, 2000, a facsimile was received by the WIPO Center from the Technical Contact for the domain names, Bernardo Beyer, saying his name had been removed as Technical Contact for the domain names, that he has "nothing to do with" the Respondent, and requesting that he be deleted from subsequent correspondence. The WIPO Center conducted a further WHOIS search of the Registrarís database on March 14, 2000, which disclosed that Bernardo Beyer was still identified as the Technical Contact for the domain names.

Filing of Response

No Response was filed by the Respondent within the time specified in the Notification of Complaint. As of the date of this decision, no Response had been filed by the Respondent.

Constitution of Administrative Panel

Having received no response from the Respondent within the specified time in the Notification of Complaint, on March 8, 2000, the WIPO Center issued to both parties a Notification of Respondent Default. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, Dr Andrew Christie. On March 14, 2000, Dr Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On the same date the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr Christieís appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by March 27, 2000. The case before this Administrative Panel was conducted in the English language.

 

4. Factual Background

The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.

Complainantís Activities

The Complainant has been producing and broadcasting radio and television programmes for over 70 years. In that time the Complainant has developed a reputation throughout the world for its extensive broadcasting, publishing, merchandising and other related activities under the BBC mark. The Complainant also has an extensive internet presence using the BBC mark. The BBC Online website at www.bbc.co.uk and the BBC News Online website at news.bbc.co.uk are amongst the most visited websites in the world.

In South America, the Complainant is extensively known for the following services broadcast under the BBC mark:

(i) The radio service, currently branded as BBC WORLD SERVICE which has been broadcast across South America since March 14, 1938.

(ii) The provision since 1995 of a Spanish version of its BBC News Online service, located at www.bbc.co.uk/Spanish/index.shtml and branded BBC MUNDO and which receives approximately 120,000 hits per month.

(iii) The broadcast of BBC WORLD television service across the world and in South America (including Venezuela) since September 1996.

Complainantís Trademarks

The Complainant is the proprietor of two registrations in Venezuela, seven registrations in the United Kingdom, and four registrations in the United States of a trademark consisting of BBC (details of which are contained in Appendixes 6, 7 and 8 of the Complaint), as follows:

Country

Class (and goods/services)

Date of registration

Venezuela

9 (apparatus for recording, transmission or reproduction of sound or images)

3 June 1991

 

25 (clothing)

4 March 1991

United Kingdom

9 (microcomputers and parts and fittings therefor; computer programmes)

20 May 1986

 

16 (printed matter)

2 December 1981

 

25 (clothing)

22 April 1987

 

28 (games and playthings)

15 April 1992

 

38 (telecommunications services)

1 October 1986

 

41 (education; providing training, entertainment)

1 October 1986

 

42 (scientific and industrial research; services that cannot be placed in other classes)

1 October 1986

United States of America

9 (for pre-recorded audio and video tapes and discs and cinematographic films)

19 September 1989

 

16 (for books, booklets, pamphlets and magazines, all dealing with a variety of topics)

19 September 1989

 

38 (for radio and television broadcasting)

19 September 1989

 

41 (for entertainment and education services, namely production, presentation and rental of Radio and television programmes, film production, presentation and rental; road-shows; publication services)

19 September 1989

The Complainant claims that the Complainant is the applicant for registration of three trademarks consisting of BBC in Venezuela in classes 16 (for printed matter), 38 (for radio and television broadcasting) and 41 (for entertainment and educational services). The Complainant did not, however, provide evidence in support of this claim, and so this Administrative Panel makes no finding in relation to the Complainantís claim that the Complainant is the proprietor of these marks as unregistered trademarks.

The Complainant began broadcasting Spanish programming by radio to the Spanish-speaking Americas on March 14, 1938. In the late 1940ís the Complainant began referring to itself as BBC de Londres on such broadcasts, and on other media such as print. In so doing, the Complainant has distinguished itself as a provider of news, information and entertainment services in various media under the mark BBC de Londres. Appendixes 10 and 11 provide evidence of Complaintís use of the mark BBC de Londres as a trademark. This Administrative Panel finds that Complainant is the proprietor of the unregistered trademark BBC de Londres for the purpose of this Complaint.

The Complainant claims it is the proprietor of the unregistered mark BBC en Espanol. In support, it points to the fact that the Complainant has provided Spanish news and information at the URL www.bbc.co.uk/spanish/index.shtml since 1995. A link to that URL is found on the World Service page of the Complainantís website, at www.bbc.co.uk/worldservice/index.shtml, where the BBC World Service banner is followed by four language options, with access to the Spanish-language option via by the text link EN ESPAÑOL. This Administrative Panel does not consider this juxtaposition of BBC with EN ESPAÑOL to constitute use of the mark BBC en Espanol as a trademark. Rather, it is use of the mark BBC as a trademark, in circumstances indicating that the services provided under the mark include programming in the Spanish language. Accordingly, this Administrative Panel does not find that the Complainant is the proprietor of the unregistered mark BBC en Espanol for the purposes of this Complaint.

Respondentís Activities

Prior to the issuing of the Complaint, the Respondent had a number of telephone conversations with Mr Carlos Villalobos, the Press Attachť at the British Embassy in Caracas, Venezuela. A signed statement by Mr Villalobos about the content of these conversations is Appendix 5 to the Complaint. In these conversations with Mr Villalobos, the Respondent stated that he had registered in his own name the domain names bbcdelondres and bbcenespanol under various top level domains, and that he could commercially exploit the Complainantís news and information content by posting advertising banners above this content at those sites. The Respondent requested that the Complainant enter into an arrangement where revenue from the sites would be shared between the Respondent and the Complainant. Upon being told by Mr Villalobos that the Complainant as a public broadcaster and under the terms of its Charter does not advertise on any of its public broadcasting stations, the Respondent suggested that the domain names could be sold to the Complainant for a sum of US$75,000. In a subsequent conversation, the Respondent told Mr Villalobos that he had launched a web site at bbcdelondres.com which displayed the Complainantís content below advertising banners.

The Respondentís site, hosted under the domain name bbcdelondres.com has framed the Complainantís Spanish website, situated at www.bbc.co.uk/Spanish/index.shtml. The respondent has also made use of the Complainantís distinctive logo on the frame of the site at bbcdelondres.com.

The Respondent uses the phrase "Bienvenido a www.bbcdelondres.com" in the frame at bbcdelondres.com. This phrase contains a hypertext link which leads to a link to a page entitled "Publicidad" which includes the following text:

Publicidad Por ser el lŪder mundial en noticias, ofrecemos informaciůn actualizada, veraz e independiente las 24 horas del dŪa para toda nuestra audiencia latinoamericana.

Contamos con corresponsales y colaboradores en todo el mundo, lo que le permite tener una mayor cobertura noticiosa en la red de redes y medios tradicionales.

Si desea anunciarse en este site, por favor comunŪquese con nuestra Gerencia de Ventas:

An English translation of this statement reads:

PUBLICITY/ADVERTISING

To be a world leader in news, we offer up to date, accurate and independent information 24 hours a day to our Latin American audience.

We have reporters and associates world-wide which allows us to have better news coverage on the internet and in other traditional media.

If you want to advertise on this site, please contact our Sales Office:

Following this statement is a link to an e-mail contact to the address info@bbcdelondres.com. The Respondent has posted various advertising banners on the site at bbcdelondres.com.

 

5. Partiesí Contentions

The Complaint

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to each of the domain names the subject of this dispute.

In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name bbcdelondres.com is identical to the Complainantís unregistered trademark BBC de Londres. In addition, the Complainant contends that this domain name is confusingly similar to the Complainantís registered trademark BBC. In relation to the domain names bbcenespanol.com, bbcenespanol.net and bbcenespanol.org, the Complainant contends that these domain names are confusingly similar to the Complainantís registered trademark BBC.

In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent is not a licensee of the Complainant, and that the Complainant has not given the Respondent express or implied authorisation to use the Complainantís trademarks. In addition, the Complainant contends that the Respondent has not been commonly known by the domain names in issues. Further, the Complainant contends that there is no evidence before any notice to the Respondent of the dispute of the Respondentís use of, or demonstrable preparations to use any of, the domain names or a name corresponding to any of the domain names in connection with a bona fide offering of goods and services. Finally, the Complainant contends that the Respondent is not making legitimate non-commercial or fair use of the domain names. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances. First, the Respondent has intentionally attempted to attract, for financial gain, Internet users to the Respondentís web site at bbcdelondres.com, by creating confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of that site. In particular, by framing the content of the Complainantís Spanish web site and by using the Complainantís distinctive BBC logo at the Respondentís web site at bbcdelondres.com, the Respondent has wrongly indicated that the Complainant endorses the Respondentís site. Secondly, the Respondent at the web site at bbcdelondres.com has passed himself off as the Complainant. In particular, by referring to being a world leader in news, providing up to date, accurate and independent information 24 hours a day, from reporters and associates worldwide, the Respondent wrongly leads readers of his site at bbcdelondres.com to believe this site is run by the Complainant. Thirdly, the Respondent at the site bbcdelondres.com has commercially exploited the Complainantís news and information, in particular by framing the content of the Complainantís Spanish web site and placing advertising above it. Fourthly, the primary purpose of the registration by the Respondent of all the domain names in issue was to sell, rent or otherwise transfer them to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain names. In particular, the Respondent told the Press Attachť at the British Embassy in Caracas that he would accept an offer of US$75,000 for the domain names, being a value which clearly exceeds any out-of-pocket expenses directly related to these domain names.

The Response

The Respondent did not file a Response to the Complaint.

 

6. Discussion and Findings

A. bbcdelondres.com

Identical or Confusingly Similar Domain Name

In relation to the domain name bbcdelondres.com, the relevant part of this domain name is bbcdelondres. This Administrative Panel finds that this part of the domain name is confusingly similar to the Complainantís registered trademark BBC. The Complainantís mark BBC is widely known, and in particular is widely known in relation to the provision of news, information and entertainment in the Spanish language. The fact that the Complainant is based in London is also widely known, both generally and amongst consumers of news, information and entertainment in the Spanish language. The addition of the words de Londres in the domain name does not distinguish the use of the letters bbc from the association with the Complainant that these letters have in the mind of consumers. In fact, the use of these words serves to confirm such an association in the mind of consumers. This Administrative Panel finds that consumers of news, information and entertainment would be confused into thinking that the domain name bbcdelondres.com is associated with the Complainant, and hence finds that it is confusingly similar to the Complainantís trademark BBC.

The Complainant contended, in addition, that the domain name bbcdelondres.com is identical to the Complainantís unregistered trademark BBC de Londres. This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a "trademark or service mark" in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks.

This Administrative Panel further notes, however, that to date there has been no clearly accepted practice of other Administrative Panels applying the Uniform Policy to unregistered trademarks and service marks. The application of the Uniform Policy to unregistered trademarks and service marks may require consideration of principles additional to or different from the principles which have emerged from previous decisions of Administrative Panels as being relevant to the application of the Uniform Policy to registered trademarks and service marks. Because the Complainant has succeed in its contention that paragraph 4(a)(i) of the Uniform Policy is satisfied by virtue of the domain name bbcdelondres.com being confusingly similar to the Complainantís registered trademark BBC, it is not necessary for this Administrative Panel to consider whether that paragraph of the Uniform Policy is also satisfied by virtue of the domain name being identical to the Complainantís unregistered trademark BBC de Londres. Accordingly, this Administrative Panel makes no finding on this matter.

Respondentís Rights or Legitimate Interests in the Domain Name

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the mark BBC is not one that traders would legitimately choose in the context of provision of news, information and entertainment services unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.

Domain Name Registered and Used in Bad Faith

The Complainant provided evidence of actual uses made of the domain name by the Respondent, as detailed in paragraph 5.4 above, which establish that the domain name was registered and is being used by the Respondent in bad faith. In particular, bad faith registration and use of the domain name is established by the fact that the Respondent has used the domain name as the address of a web site at which: (i) the Complainantís BBC logo is used, (ii) the Complainantís content is framed, (iii) there is given a description of services that are consistent with the Complainantís activities but not the Respondentís activities, and (iv) the Respondentís advertising appears. These activities of the Respondent constitute an intentional attempt to attract, for commercial gain, Internet users to the web site at the domain name by creating a likelihood of confusion with the complainantís BBC mark as to the source, sponsorship, affiliation or endorsement of the web site, being a circumstance of evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Uniform Policy. Furthermore, bad faith registration and use is established by the fact that the Respondent offered to sell the domain name as part of a package of domain names for US$75,000. This is an offer to transfer the domain name to the Complainant for an amount in excess of out-of-pocket expenses directly related to the domain name, being a circumstance of evidence of bad faith registration and use pursuant to paragraph 4(b)(i) of the Uniform Policy. Accordingly, this Administrative Panel finds that the domain name was registered and is being used by Respondent in bad faith

B. bbcenespanol.com, bbcenespanol.net and bbcenespanol.org

Identical or Confusingly Similar Domain Names

In relation to the domain names bbcenespanol.com, bbcenespanol.net and bbcenespanol.org, the relevant part of these domain names is bbcenespanol. This Administrative Panel finds that this part of those domain names is confusingly similar to the Complainantís registered trademark BBC. As noted above, the Complainantís mark BBC is widely known, and in particular is widely known in relation to the provision of news, information and entertainment in the Spanish language. The addition of the words en Espanol in the domain name does not distinguish the use of the letters bbc from the association with the Complainant that these letters have in the mind of consumers. In fact, the use of these words in the context of the provision of news, information and entertainment in the Spanish language, being a service for which the Complainant is widely known, serves to confirm such an association in the mind of consumers. Accordingly, this Administrative Panel finds that consumers of news, information and entertainment in the Spanish language would be confused into thinking that the domain names bbcenespanol.com, bbcenespanol.net and bbcenespanol.org are associated with the Complainant, and hence finds that these domain names are confusingly similar to the Complainantís trademark BBC.

Respondentís Rights or Legitimate Interests in the Domain Names

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in these domain names. For the same reasons as are given in paragraph 6.4 above, this Administrative Panel finds that the Respondent has no rights or legitimate interests in these domain names.

Domain Names Registered and Used in Bad Faith

The Complainant provided no evidence of the Respondent using these domain names in association with a web site or other on-line presence. As noted in paragraph 4.8 above, the Complainant did provide evidence, however, of an offer by the Respondent to sell these domain names, together with the domain name bbcdelondres.com, to the Complainant for a sum of US$75,000. On the basis of this evidence, this Administrative Panel finds that the Respondent registered these domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant for valuable consideration in excess of out-of-pocket expenses directly related to those domain names. Accordingly, pursuant to paragraph 4(b)(i) of the Uniform Policy, this Administrative Panel finds that the Respondent has registered and is using these domain names in bad faith.

 

7. Decision

This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to each of the domain names the subject of the Complainant.

Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc, transfer the domain names bbcdelondres.com, bbcenespanol.com, bbcenespanol.net and bbcenespanol.org to the Complainant, The British Broadcasting Corporation.

 


 

Andrew F. Christie
Presiding Panelist

Dated: March 23, 2000