WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BRITISH SKY BROADCASTING LIMITED v. DOMAIN RESERVATIONS
Case No. D2000-0507
1. The Parties
1.1. Complainant: British Sky Broadcasting Limited of Grant Way, Isleworth, Middlesex, TW7 5QD, England.
1.2. Respondent: Domain Reservations of 81 Belfield Park, Stillorgan, Co. Dublin, Eire.
2. The Domain Name(s) and Registrar(s)
2.1. Domain Names:
2.2. Registrar: Network Solutions Inc.
3. Procedural History
3.1. The Complaint was received by WIPO by email on May 26, 2000 and in hard copy on May 29, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
3.2. The Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the Respondent responded to the Complaint within time by email on June 19, 2000. The Response led to further emails to WIPO, the content of which is referred to below. Nonetheless, it is convenient to mention here that these exchanges highlighted a dispute as to fact and both the Complainant and the Respondent have offered to verify their evidence on oath, an offer which has not been taken up by the Panel.
3.3. The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
3.4. No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís Decision is July 18, 2000.
4. Factual Background
4.1. Apart from the dispute as to fact referred to in the previous section and at paragraph 4.3 below, none of the background facts are in dispute. In particular, the following are not in dispute:
4.1.1. The Complainant is a member of the British Sky Broadcasting Group Plc. with a claimed turnover of £1,545 million for 1998/1999 and is one of the leading providers of analogue and digital subscription television channels in the UK and Eire and the leading provider of such services in the UK and Eire provided direct to home by satellite.
4.1.2. The Complainant is and at all material times has been the registered owner of three UK trade mark registrations for SKY MOVIES (words) dated June 15, 1988, June 15, 1988 and May 2, 1996 respectively and one UK trade mark registration for SKY BOX OFFICE (words) dated November 7, 1995 (together "The Trade Marks").
4.1.3. In February 1989 the first ever UK and Eire movie subscription channels were launched by a group company of the Complainant under the mark SKY MOVIES. In June 1994 as part of the restructuring of the Complainantís group, the Broadcasting Licences for all channels, including the SKY MOVIES channels were transferred to the Complainant. By April 1998 and at all material times thereafter there have been approximately 3.5 million subscribers in the UK and Eire to at least one of the Complainantsí Sky Movies channels. On March 17, 1996 the first pay per view event on British Television was held under the SKY BOX OFFICE mark which was viewed by 660,000 paying subscribers in the UK and Eire. In December 1997 the Complainant launched a pay per view movie channel in the UK and Eire under the mark SKY BOX OFFICE. The SKY MOVIES and SKY BOX OFFICE channels have been widely advertised, marketed and promoted in the UK and Eire.
4.1.4. In the result by at least April 1998 the Complainant had and continues to have substantial goodwill and reputation in the UK and Eire in its business represented by The Trade Marks.
4.1.5. The Respondent has the business name Domain Reservations and operates the email address email@example.com. It registers domain names and is willing to sell them. On or about April 30, 1998 the Respondent registered with Network Solutions Inc. skymovies.com and skyboxoffice.com ("The Domain Names").
4.2. Sub-paragraph 4.1.5 apart, the preceding sub-paragraphs represent a summary of paragraphs 12 and 13 of the Complaint. Sub-paragraph 4.1.5 is plain from the papers put before the Panel. In its email of June 19 and in its subsequent emails of June 28 and 30 the Respondent does not take issue with any of the above.
4.3. On or about February 11, 2000 Katie Cole of the Complainant and John Cummins of the Respondent had a telephone conversation in the course of which Katie Cole indicated that the Complainant was interested in purchasing The Domain Names. There is a dispute between the parties as to which party first made contact with the other. The Panel is unable to resolve that dispute of fact and does not find it necessary to do so. Having both parties verify their evidence on oath will not assist.
4.4. On February 15, 2000 Katie Cole on behalf of the Complainant made an offer by email to purchase The Domain Names for £10,000 sterling each. On February 18, 2000 John Cummins made a counter offer on behalf of the Respondent by email, offering to sell The Domain Names for £95,000 sterling each.
5. Partiesí Contentions
5.1. In relation to "skyboxoffice.com" the Complainant claims that the relevant part of this domain name is "skyboxoffice" which is identical to the Complainantís trade mark SKY BOX OFFICE (words). In addition, the Complainant submits that the whole of the domain name "skyboxoffice.com" is identical or confusingly similar to the Complainantís trade mark for SKY BOX OFFICE (words).
5.2. Similarly, in relation to "skymovies.com" the Complainant claims that the relevant part of this domain name is "skymovies" which is identical to the Complainantís trade marks SKY MOVIES (words). Again, the Complainant submits that the whole of the domain name "skymovies.com" is identical or confusingly similar to the Complainantís trade marks for SKY MOVIES (words).
5.3. The Complainant states that it is aware of no evidence that at any material time the Respondent has ever had any legitimate interest in or any proposal to make any legitimate use of The Domain Names or either of them.
5.4. The Complainant submits that The Domain Names were registered and used in bad faith. It claims that the evidence set out in the Complaint proves that the Respondent registered or acquired The Domain Names primarily for the purpose of selling, renting or otherwise transferring them to the Complainant for valuable consideration in excess of the Respondentís documented out of pocket costs related directly to The Domain Names. The Complainant goes on to point out that the Respondentsí name Domain Reservations indicates that the nature of the Respondentís business is to trade in domain names.
5.5. The Complainant submits that the reputation of The Trade Marks is such that it is inconceivable that the Respondent would not have been aware at the time of registration of The Domain Names of the reputation of The Trade Marks and the connection between them and the Complainant. It submits that members of the public in the UK and Eire would believe that an entity owning The Domain Names was the Complainant or in some way associated with the Complainant and that any realistic use of The Domain Names otherwise than by the Complainant must misrepresent an association with the Complainant and its goodwill resulting in passing off in Eire and passing off and trade mark infringement in the UK.
5.6. The Complainant contends that the Panel should issue a decision to the effect that The Domain Names are transferred to the Complainant.
5.7 The Respondentís contentions are set out in John Cumminsí emails of June 19, June 28 and June 30 and they may be summarised as follows:
5.7.1. The Complainant is a UK company and by reason of the UK being its country of origin is entitled to .co.uk domain names "relevant to its organisation", but not to .com domain names, such domain names not being referable to the Complainantís country of origin.
5.7.2. The Respondent has just as much a right to the .com domain names as the Complainant has.
5.7.3. The Respondent has not "violated any trade mark or patent laws as nothing has been posted on the said domains".
5.7.4. The Respondent never intended to sell the domain names to the Complainant. It was the Complainant who was seeking to purchase. Had the Respondent intended to sell the names to the Complainant, the Respondent would have contacted the Complainant back in 1998 when the names were first registered.
5.7.5. The Respondent intends to develop the names into websites and feels that the names are worth more as developed sites than the £20,000 offered by the Complainant.
6. Discussion and Findings
6.1. First, in light of the undisputed facts set out in paragraph 4 above, the Panel finds as a fact that in the UK and Eire, the trade marks SKY MOVIES and SKY BOX OFFICE were at all material times very well known trade marks of the Complainant and from at least as early as April 1998 served to denote the goods, services and activities of or connected with the Complainant.
6.2. According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
6.2.1. each of The Domain Names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
6.2.2. the Respondent has no rights or legitimate interest in respect of The Domain Names or either of them; and
6.2.3. The Domain Names and each of them have been registered and are being used in bad faith.
6.3. Identical or Confusing Similarity
6.3.1. Manifestly, The Domain Names are substantially identical or, failing that, confusingly similar to The Trade Marks. It is to be observed that the Respondent has not sought to argue the point.
6.4. Rights or Legitimate Interest of the Respondent
6.4.1. The Respondent has not sought to argue a positive case that it has any right or legitimate interest in The Domain Names save such rights as it may have acquired by having got there first and obtained the registrations. As indicated above, the Respondentís position appears to be that because The Domain Names are .com domain names they are not country specific and nobody can have any better right to them than anybody else. There is no basis in law or logic for any such argument and the Panel rejects it out of hand.
6.4.2. Manifestly, the fame of The Trade Marks has been such that the Respondent must have been aware at all material times of The Trade Marks and the Complainantís interest in them. Manifestly too the Respondent must have known that nobody other than the Respondent could lawfully use The Domain Names or either of them in the course of trade in the UK or Eire. In particular, the Respondent must have known that it could not itself have lawfully used The Domain Names. These points have been clearly raised in the Complaint and the Respondent has not sought to contest them.
6.4.3. While the Respondent has had ample opportunity to do so, it has not provided any information which would enable the Panel to conclude that it has any right or legitimate interest to The Domain Names. John Cumminsí email of June 30 simply says that the Respondent intends to develop the names into websites which will increase their worth but he does not provide any further particulars. The Panel observes that the Respondent is aware of the potential consequences of developing the names into websites, one of the Respondentsí defences being that the Respondent has not "violated any trade mark or patent laws as nothing has been posted on the said domains".
6.4.4. The Panel unhesitatingly takes the view that the Respondent has no right or legitimate interest in The Domain Names.
6.5. Bad Faith
6.5.1. Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has 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 trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of the Respondentís documented out of pocket costs directly related to the domain name". Having found as a fact that The Trade Marks were well known in the UK and Eire and were well known to the Respondent when the Respondent registered The Domain Names and the Respondent having provided no explanation as to why it selected The Domain Names for registration, the Panel is left with little choice but to conclude that The Domain Names must have been registered and maintained in anticipation of recovering a large sum of money from the Complainant. As the Complainant rightly points out, The Domain Names can be of no lawful interest to anybody other than the Complainant.
6.5.2. That the Respondent was alert to the commercial possibilities is evident from John Cumminsí email to Katie Cole of February 18 2000. This is an important communication and needs to be read in full.
"Dear Ms Cole
Thank you for your email. My thoughts on the matter are quite simple. The development of a web based total media strategy is key for the success of both BSkyB and its shareholders. I was encouraged to see that Mr. Tony Ball your Chief Executive shares this vision and the considerable investment, £250 million, provides a good starting point for your strategy.
Obviously the key is leveraging your already strong product awareness in the market place on as many different platforms as possible. From Mobile phones to interactive TV to your existing cable and digital networks. An integral part of this is the utilising all forms of web based assets to facilitate customers access to the market. Imagine the ease of ordering movies over your 3rd generation phone or from your interactive TV. I believe Mr. Swingewood shares this vision (as head of new media) and has taken steps to develop what is a very exciting area for your company.
Once a decision has been made to take advantage of the opportunities that present themselves and in order to meet the budgeted 5 million customers that Mr. Ball spoke about, time is the key. I am sure you will agree that the valuation of these names is open for debate, however what is very clear is that they are of use to BSkyB and the development of your new media strategy. With this in mind I will sell to you the names for stg95,000 each, which I feel is a fair price for accessing two valuable marketing tools in a very short time in order to enable you to build out and implement Mr. Ballís Strategy.
If you have any further questions do not hesitate to contact me.
6.5.3. That email was dated February 18, 2000, which, as the Respondent points out, is nearly two years from the date of registration of The Domain Names. The Respondent invites the Panel to infer that because the Respondent had taken no steps to attempt to sell The Domain Names prior to (as the Respondent would have it) the Complainantís approach to purchase, the Respondent had no prior intention to sell. In the Panelís view it would be testing credulity beyond reasonable limits that a business named Domain Reservations which is apparently willing to sell domain names which it has registered, could in these circumstances have registered The Domain Names otherwise than with a view to selling them for a very large sum of money to the Complainant. The Panel cannot believe that the Respondentís awareness of the particular and unique value of The Domain Names to the Complainant only arose after the event. It is well known that following decisions such as the One In A Million decision of the English High Court in November 1997 and other similar decisions in other jurisdictions (the import of which was communicated worldwide and rapidly to interested parties via the Internet) domain name holders holding domain names of unique value to trade mark owners were liable to make themselves vulnerable to civil proceedings by making the first approach to the intended purchaser.
6.5.4. As indicated above, the Panel is not in a position to resolve the dispute as to who in fact made the first approach. Even if, as the Respondent claims, it was the Complainant who made the first approach, that does not detract from the Panelís view that it was an approach that the Respondent was hoping for and which would enable the Respondent to make extortionate demands of the Complainant as evidenced by John Cumminsí email to Katie Cole of February 18 in which the Respondent sought £95,000 sterling for each of The Domain Names.
6.5.5. In the result the Panel holds that the Respondent registered The Domain Names in bad faith.
6.5.6. While the Panel is satisfied that The Domain Names were registered in bad faith, it is necessary for the Complainant to prove that The Domain Names are being used in bad faith. Neither of The Domain Names connects to a website or other online facility. Nonetheless, in the Panelís view, there are in these circumstances at least three ways of identifying relevant bad faith use.
18.104.22.168. The first, which the Panel does not adopt, is that the use is a passive use of the kind referred to in Administrative Panel Decision Telstra Computers Limited Ėv- Nuclear Marshmallows Case No. D2000-0003, a case cited in the Complaint by the Complainant. While the Panel acknowledges the rationale behind that decision, the Panel does not consider that in this case the use of The Domain Names is a passive use.
22.214.171.124. The second, which the Panel does adopt, is that The Domain Names are actively being used to extort extortionate sums from the Complainant. The Panel refers to the text of the email of February 18 to Katie Cole which is quoted in full above. The sums demanded can only be justified on the basis that The Domain Names have a unique value to the Complainant.
126.96.36.199. The third, which may be a variant of the second, and which again the Panel does adopt, is that if John Cummins in his email of June 30 is to be believed "the Respondent intends to develop the names into websites and feels that the names are worth more as developed sites than the £20,000 offered by the Complainant". It would be an absurdity if the Complainant had to wait for the Respondent to commence that use and commit the torts of passing off and/or trade mark infringement with consequent damage to the Complainantís reputation and goodwill before effective action could be taken. Again, the Panel observes that one of the Respondentís defences is that the Respondent has not "violated any trade mark or patent laws as nothing has been posted on the said domains". The Panel takes the view that the expressed proposal to use, which was intended, as the Respondent frankly admits, to increase the purchase price and not for any inherent increase in value of The Domain Names to the purchaser, itself constitutes use in bad faith.
7.1. In the light of the foregoing, the Panel decides that each of The Domain Names is substantially identical to and/or confusingly similar to the corresponding trade mark or trade marks of the Complainant, that the Respondent has no rights or legitimate interests in either of The Domain Names and that The Domain Names were in each case registered and are being used in bad faith.
7.2. Accordingly, in the light of the foregoing, the Panelist requires that the registrations of the domain names skymovies.com and skyboxoffice.com be transferred to the Complainant.
Dated: 13 July 2000