WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

European Broadcasting Union v. EasySkies BV

Case No.D2001-0468

 

1. The Parties

The Complainant is European Broadcasting Union, Ancienne Route 17a), Case postale 45, CH-1218 Grand-Saconnex, Switzerland.

Represented by Dr Werner Rumphorst, Director, EBU Legal Department.

The Respondent is EasySkies BV, Moerweide 23, NL-2811 JC Reeuwijk, The Netherlands.

Represented by Steinhauser & Hoogenraad, (Ms Carien van Boxtel), PO Box 75140, NL-1070 AC Amsterdam, Netherlands.

 

2. The Domain Names and Registrars

The Domain Names are <eurovision.tv> and <eurovisiontv.com>.

The Registrars are Tucows Inc. and The .tv Corporation International.

 

3. Procedural History

The Complaint was received by WIPO by email on March 30, 2001 and in hardcopy form on April 2, 2001. The Complainant filed additional annexures to the Complaint on

April 6, 2001. On April 11, 2001 WIPO requested an amendment to the Complaint. The amendment was received by email on April 12, 2001. 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.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrars have confirmed that <eurovision.tv> and <eurovisiontv.com> ("the Domain Names") were registered through Tucows Inc. and The .tv Corporation International and that EasySkies BV is the current registrant. The Registrars have further confirmed that the Policy is applicable to the Domain Names.

On April 25, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was May 14, 2001. The Response was received on May 14, 2001.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is June 10, 2001.

 

4. Factual Background

The Complainant is a professional non-profit association of national broadcasters. On behalf of its 69 member organisations in 50 countries throughout the European Broadcasting Area, the Complainant operates, inter alia, the Eurovision Network, organises radio and television programme exchanges (such as Eurovision News and Eurovision Sports) co-ordinates international productions and co-productions (such as The Eurovision Song Contest – since 1956) and provides a range of other operational services (such as the Eurovision Communications Satellite Network – since 1962).

The Complainant is the proprietor of an international trade mark and service mark registration (IR634693) dated April 21, 1995 for goods and services in Classes 9 (carriers of sound recordings, optical data etc) and 38 (communications services, transmission of radio and television programmes etc) for a device mark incorporating the word "Eurovision" as a prominent element.

Originally the domain name <eurovision.tv> was registered in the name of DomainXelect at Transtrend BV and the domain name <eurovisiontv.com> was registered in the name of EasyDN.com at Transtrend BV. In the case of both the Domain Names the Administrative and Technical Contacts were Gerard Van Vliet. In the case of both of the Domain Names the address for the original registrants was Admiraleitskade 50, NL-3063 ED NL.

On January 19, 2001, the Complainant wrote to the then registrants at the registration address notifying them of the Complainant’s rights in and to the word Eurovision, observing that the Domain Names were connected to no active sites and requesting information as to the registrants’ proposed uses for the Domain Names.

On January 29, 2001, the Respondent’s representative responded on behalf of Mr. Gerard Van Vliet and the correspondence continues on the basis that the Respondent’s representative is representing Mr. Gerard Van Vliet and Transtrend BV. Indeed, it was the Respondent’s representative who introduced the heading to the letters "20012945: Transtrend/EBU".

The substance of the Respondent’s representative’s initial position acting on behalf of Mr. Van Vliet and Transtrend BV was that:-

(i) his clients were prepared to abandon the domain name <eurovisiontv.com> and to transfer the registration to the Complainant at cost;

(ii) his clients were "familiar with the term ‘Eurovision’ that is used to distinguish certain supra-national broadcasting activities between public national broadcasters in Europe";

(iii) there has been no infringement of the Complainant’s rights – "my client uses the word ‘Eurovision’ therefore in the strict literal sense, namely vision on the Euro and on Europe.";

(iv) the .tv domain was used because the .com domain was not available. The .tv suffix "represents the abbreviation of the island Tuvalu and does not refer to the activities of [the Complainant].";

(v) there was never any intention to sell the <eurovision.tv> domain name;

(vi) Eurovision is of limited distinctiveness and it is doubtful if the scope of its protection allows the Complainant to take any action in respect of the Domain Names.

The above points were made by the Respondent’s representative in a letter dated February 7, 2001. The Complainant’s response dated February 16, 2001, was hostile. The Complainant pointed out that the website which was by then connected to one of the Domain Names had not existed at the time the correspondence commenced. The Complainant expressed the view that the website was a "fake" and pointed to the disingenuous explanation for the .tv domain.

On March 20, 2001, the Respondent’s representative replied on behalf of the original registrants but not giving way. He explains the use of the .tv domain in the following terms, namely "… the extension .tv has relevance in the world of financial information, because market quotes are relayed via terminals (ie tv screens)".

At some stage in March, believed to be shortly before or shortly after the date of that letter the Domain Names were transferred to the Respondent.

On March 30, 2001, the Complainant responded that it had commenced this complaint procedure under the Policy. Other allegations are made in the letter but it is not necessary to deal with them at this stage.

On April 25, 2001, in response to an email from WIPO addressed to the Respondent, Mr. Gerard Van Vliet, the Chief Executive Officer of Transtrend BV states:-

"The email to which we hereby respond has apparently been sent in error to our email address (ie to an email address of Transtrend BV, a firm specialising in asset management). Therefore we "literally" return the email sent by you because we are not – and have never been – involved in the buying and selling of domain names. As a consequence there can neither be a domain name dispute, nor a WIPO procedure, in which Transtrend BV is a party. Please take good note of the above."

On May 1, 2001, a letter was received by WIPO from Transtrend BV in the following terms:-

"Last week an envelope (DHL Airway Bill 4540648711) was received by us, apparently in error. As we receive many packages from couriers, this unfortunately happens from time to time.

You addressed your envelope to "EasySkies, Admiraleitskade 50, Rotterdam NL 3063, The Netherlands".

As we do not have an activity named EasySkies, nor do we know of one in the large office building we reside in, we therefore return your package."

For the record, the Panel regards these two communications as being of significance given the terms of the Response which is quoted almost verbatim at paragraph 5B below. The Panel has in mind in particular the introductory "preamble" to the Response.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:-

A. Trademark rights owned by the Complainant

The Complainant is a professional non-profit association of national broadcasters. On behalf of its 69 member organizations in 50 countries throughout the European Broadcasting Area, the Complainant operates, inter alia, the Eurovision network, organizes radio and television programme exchanges (such as Eurovision news and Eurovision sports), coordinates international (co-) productions (such as the annual Eurovision Song Contest – since 1956) and provides a range of other operational services (such as the Eurovision communications satellite network - since 1962).

The Complainant is the owner of the international collective trademark and service mark IR 634 693 "Eurovision" (word plus logo), as registered on April 21,1995 for 28 countries in Europe and North Africa, for the goods "carriers of sound recordings, optical data and other carriers of European origin" and the services "communications services; transmission of radio and television programmes; telex services; telephone services (operation of a telephone network); transmission of messages via radio; collection and supply of news; transmission of sounds and images via satellite". These countries are Algeria, Germany, Austria, Belarus, the Benelux countries, Bosnia-Herzegovina, Bulgaria, Croatia, Egypt, Spain, Former Yugoslav Republic of Macedonia, Russia, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Poland, Portugal, Moldova, Czech Republic, Romania, Slovenia, Ukraine, Yugoslavia.

The same trademark is also registered in a significant number of other European countries for which the application was made on a national basis (e.g. the United Kingdom, Switzerland, and the Nordic countries).

The trademark is in continuous and extensive use by the Complainant and its members.

Ever since the beginnings of television broadcasting, the Complainant and its members have also used the word "Eurovision" for all kinds of television services, and particularly for the Complainant's permanent international network and for television programming. Earlier trademark registrations of the previous version of the logo by the Complainant or its members also included the word Eurovision. With that word, the Complainant has achieved international recognition and critical acclaim for television broadcasting services, and the use of that word has come to be recognized by the relevant circles as indicating the source of such services offered exclusively by the Complainant or its members. As a result, the Complainant also has "common law" rights in the word Eurovision as such.

For example, for decades the annual Eurovision Song Contest final has been broadcast simultaneously in more than 20 countries in Europe. This year's Eurovision Song Contest, on May 12, 2001, is going to be broadcast live over the Internet; the technical preparations for that major event have recently started. It is expected that the Internet transmission of the Song Contest final will become at least as popular as the traditional television broadcast, particularly when Internet broadband services are available on a larger scale.

Moreover, through the long, continuous and extensive use of the Eurovision mark in connection with Complainant's and its members' services, the mark has become well known within all the relevant circles of the field of television broadcasting, so that Eurovision is to be considered a well-known service mark.

The reputation of, and protection for, the Eurovision trademark of the EBU is confirmed by a recent decision of the WIPO Arbitration Centre (which is available at the WIPO's Internet site at http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0737.html).

B. Factual and legal grounds

1. Similarity between the trademark and the domain name

It is undisputed that the international trademark (service mark) and the two domain names in question are confusingly similar. The dominant part of both the mark and the domain names is the identical word Eurovision.

2. Rights or legitimate interests in respect of the domain name

The Respondent is a firm acting on behalf of three other companies, of which at least EasyDN.com is in the business of registering and selling domain names.

The Respondent has not shown that itself or any of its companies has any prior rights or any legitimate interests in respect of any of the domain names in question. To the Complainant, the Respondent has not provided any evidence of circumstances giving rise to such a right or interest. The Respondent has not indicated that it made any type of search on prior trademarks or similar rights for the word Eurovision in Europe. On the other hand, the Respondent has admitted being familiar the word Eurovision being used to distinguish broadcasting activities.

The Eurovision mark, with or without the words "Song Contest", is not a word which traders in the field of television services would legitimately choose for such services unless seeking to create the impression of an association with the Complainant or any of its members.

3. Registration and Use in bad faith

The domain names are registered and used by the Respondent in bad faith. These intentions on the part of the Respondent follow on from an assessment of the actual circumstances.

On January 19, 2001, after noting the registration of the domain names <eurovision.tv> and <eurovisiontv.com> without permission, the Complainant sent a letter informing the Respondent of its ownership of the Eurovision trademark and requiring an explanation as to the intentions for the use of the domain names, which, at that time, were not used for any website. On the deadline for the reply set by Complainant, notably January 29, 2001, Complainant received a letter from the legal representative of the Respondent, stating that a reply would be given on February 5, 2001. On February 7, 2001, the legal representative replied on behalf of all holders of the domain name registrations that the Respondent would be willing to abandon and transfer the name <eurovisiontv.com>, but that such was not the case with the name <eurovision.tv>, since a web site under that domain name was created with a view to provide business and background information on the "Euro" currency. According to that reply, the only reason for the Respondent to have chosen <eurovision.tv> for such website was that the domain name <eurovision.com> was no longer available. Also, it was claimed that it had never been the intention of the Respondent or its companies to transfer or sell the domain names to any third party.

On February 16, 2001, the Complainant replied that there were various reasons to doubt the truthfulness of the Respondent's arguments, and that the actual circumstances of the matter indicated that the sole intention of Respondent's recently designed website was to create a "smokescreen" with the purpose of avoiding being condemned of a trademark infringement under Benelux trademark law. In short, the main reasons for this view of the Respondent were the following :

- no website under the URL www.eurovision.tv existed before the Respondent received Complainant's letter (which implied more than seven months inactivity);

- the argument that it had been the intention at the moment of registration of the domain name <eurovision.tv> to develop a website with a "vision" on the Euro currency (for which, in any event, a domain name which distinguishes the word "Euro" more clearly would have been far more likely) did not find any serious support in the actual content or design of the website in question, as it lacked any communicative "message", let alone vision, on the said currency;

- the argument that the top level extension <eurovision.tv> was chosen only because the top level name <eurovision.com> was no longer available (and not because of its attractiveness for a sale to a company offering television services) was largely contradicted by the registration of <eurovisiontv.com>.

The Complainant therefore urged the Respondent to reconsider its position. After the Complainant had sent a reminder, on March 14, 2001, the legal representative replied on March 20, 2001, claiming that the Respondent did not act in bad faith and that the actual use of the domain name <eurovision.tv> for the website in question was justified.

In the meantime, another Respondent's website at www.easydn.com made it apparent that the Respondent's company EasyDN.com had registered numerous other domain names with the purpose of selling them to third parties. On March 1, 2001, that company transferred the domain name <eurovisiontv.com> to another company, called EasySkiesBV, which appeared to have taken over the responsibility for the design of EasyDN.com's website and the website under www.eurovision.tv. On the latter's website, it became also apparent that, even on the date of the Respondent's second reply, both domain names in question continued to be offered for sale. As of today, both domain names are still being offered for sale.

From this conduct, it must be concluded that on both dates of registration of the two Eurovision names (by DomainXelect and EasyDN.com), the Respondent had no genuine interest in actually using the domain names for any purpose of its own, whether or not any such purpose could be regarded as fair, non-commercial or otherwise legitimate. Also, the second attempt by the Respondent to "justify" the fake website under "www.eurovision.tv" could easily be unmasked by pointing out the irrelevancy of the new arguments and the contradictory nature of the Respondent's own activities.

It cannot be denied that the practice of the Respondent, and in particular its company EasyDN.com, consists of hoarding a large quantity of domain name registrations for the purpose of selling with obvious knowledge (or at least intentionally taking the risk) of the fact that some of these names may be confusingly similar to another's trademark. The Respondent has therefore deliberately engaged in a "pattern of conduct" of registering domain names, partly utilizing existing trademarks in which the Respondent has no rights or legitimate interests. Concerning the two "eurovision" names, the Respondent had the primary intent of preventing the Complainant from reflecting the Eurovision trademark in a corresponding domain name. Such "pattern of conduct" is evidence of the respondent's registration and use of the disputed domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy: see Guerlain S.A. v. Peikang, (WIPO decision D2000-0055).

In particular, the Respondent intentionally failed to disclose its continuing offer for sale of any of the Eurovision domain registrations, even after it was fully informed on the Complainant's ownership of the Eurovision trademark. This lack of openness indicates that the Respondent was aware of the "cybersquatting" nature of its own registration practices. Moreover, the activities of Respondent's company EasyDN.com show that it feels no reluctance whatsoever to act in complete contradiction to the instructions given to and/or received from its legal representative, and this made the filing of this Complaint without any further correspondence with the Respondent or its legal representative a necessity.

The Respondent's continuing offer on one of its companies' websites to sell both domain names in question confirms the mala fide nature of its practice. After all, a legitimate sale of the domain names would presuppose that the registrations were chosen independently and legitimately, and were not specifically created or registered for the purposes of eliciting a sale (see the WIPO Eurovision decision, as cited above). Not only the fact that both Eurovision name registrations were apparently made with the Respondent's actual knowledge that they were confusingly similar to another party's trademark, but also the continuing making the names available for sale despite the Respondent's knowledge of the trademark owner's objections, and the obvious attempt to mislead the Complainant by designing a fake website under one of the domain names clearly contradict such independent and legitimate choice.

If mala fide entrepreneurs were to be allowed to escape from liability for the bad faith registration and use of domain names by simply setting up fake or "smokescreen" websites for the domain names concerned after being contacted by the trademark owners, then both trademark law and the UDRP would run the risk of being deprived of much of their effectiveness to combat unlawful cybersquatting. Consequently, as a matter of principle, such practices cannot be tolerated.

With respect to the domain name <eurovisiontv.com>, there is no evidence that the respondent has taken any positive action in relation to this name, i.e. other than offering it for sale. It has been decided by various administrative panel decisions of the WIPO Arbitration and Mediation Center that such inaction, called "passive holding" of a domain name, must be regarded as a circumstance of evidence of bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy, see Telstra Corporation Limited, (supra) and Compaq Computer Corporation v. Beric (WIPO decision D2000-0042).

It is further worth noting that the Complainant has been involved in a number of previous domain name disputes, i.e. including both various out-of court settlements and one recent proceedings before a WIPO panel (see WIPO Case D2000-0737 as cited above). This must be seen as a strong indication that its trademark is being targeted by cybersquatters for commercial purposes. There is no evidence which could create the impression that this case is an exception thereto."

B. Respondent

The Response is as follows:-

Preamble

Prior to this procedure, the domains involved were registered under the name of DomainXelect.com at Transtrend B.V. The registration was filed by Mr. Van Vliet in his capacity of representative of the company in the process of being formed and which temporally operated under the name DomainXelect.com. This company is now called Easyskies B.V. (Respondent). At the time of the registration, DomainXelect.com or Easyskies B.V. i.o. had its temporally domicile at the office of Transtrend B.V., which company is one of the main clients of Respondent. In the meantime, the company Easyskies B.V. has been established and took over all rights and obligations, including all domain name registrations of the company in the process of being formed.

Complainant wrongly assumed that Transtrend B.V. was the Respondent in this case. Even after the correction of the previous complaint on request of the Case Manager of the WIPO Arbitration and Mediation Center […] Complainant wrongfully maintained its specification of Transtrend B.V. as a party to this procedure. Respondent wishes to challenge this specification explicitly. The actual course of events is as follows:

The domains involved were registered by DomainXelect.com on request of Transtrend B.V., a major client of Respondent, who placed an order at Respondent to develop a website the content of which should be fully dedicated to the Euro currency. To make sure its client could choose between several domain names, Respondent registered a series of domain names amongst which were the domain names involved, including EuroDN.com, Euroland.tv, Eurolandmark.com, Eurolandmarks.com and Euromarkets.tv. For the sake of this procedure, Transtrend B.V. has to be considered the (co)-user of the domain names involved and has therefore an interest of its own to defend itself against the claim of Complainant, but can not be involved in this procedure as the Respondent. For the sake of brevity, when mentioning ‘Respondent’ in this Response Respondent refers to itself and its client Transtrend B.V. unless it is mentioned otherwise. For the sake of clarity Respondent explicitly points to the fact that:

- Easyskies B.V. is the registrant of the domain names involved and is also hosting the website that is operated under these domain names;

- Transtrend B.V. is the user of the domain names and operator or proprietor of the website that is operated under these domain names.

Domain names and trademark are not confusingly similar

Complainants trademark is almost identical to the disputed domain names. Trademark and domain names are however not confusingly similar because of the following reasons:

a. The trademark EUROVISION is a figurative trademark restricted to class 9 and 38 and especially restricted to services related to television broadcasting. Respondent is not using the domain names for services related to television broadcasting. Respondent and its client are active in the field of financial services (class 36) and the websites under the domain names are clearly at first sight not related to television broadcasting. For further information on Respondent please visit its website www.easyskies.com and on its client Transtrend visit www.transtrend.com.

b. Furthermore, the relevant circles relating to television broadcasting are very small and very specialized and do have the knowledge to distinguish the trademark from the domain names. Even more so because they do know the particular services that Complainant provides. It is not likely that these relevant circles will confuse the website under the domain names with Respondent's activities. Respondent has never used the domain names for this purpose and has no plans whatsoever to use the domain name <eurovision.tv> or the domain name <eurovisiontv.com> for services in the field of television broadcasting and is willing to state so on paper.

c. Respondent uses the domain name <eurovision.tv> in order to promote its activities in this field. The website www.eurovision.tv / eurovisiontv.com is specifically used by Respondent to have a relevant platform enabling him to give its vision on the European currency, the Euro; hence the descriptive term 'EUROVISION': a vision on the Euro and the European investment market and other issues concerning his market, including foreign exchange. The websites under the domain names underline the activities of Respondent and provide a service to its (potential) clients. Respondent is not interested in the (alleged) interest which the domain names can generate because of the similarity with the trademark of Complainant, simply because these 'accidental' visitors (if any) are unlikely potential customers of Respondent. The information and services, which Respondent provides do not target Complainant's 'customers'. Under Dutch law these facts provide a legitimate reason to register and use a domain name that is similar to a trademark. The President of the Court in Amsterdam did for instant recently judged that the domain name garnier.nl, although similar to the trademark of GARNIER (shampoo), was not infringing upon the trademark because the domain name holder intended the website to promote the French singer Laurent Garnier (Pres. Rb Amsterdam, October 12, 2000, KG 00/2190 OdC). It is obvious that absence of bad faith together with the fact that there is no infringing use of the trademark when it is being used for different services does provide an opportunity to legitimately register and use the domain name for a website for different services.

The total absence of any relation to the services that Complainant provides is clear. Respondent does provide financial services. Therefore there can be no confusion as to the origin of the website under the domain names <eurovisiontv.com> and <eurovision.tv>.

EUROVISION is not a well known trademark

a. Respondent contests the notoriety of the ‘plain’ trademark EUROVISION. Complainant's claim of notoriety of the trademark for services of television broadcasting is not substantiated with any reports apart from an earlier WIPO arbitration case concerning the domain name eurovision.org, which was transferred to Complainant EBU. Complainant has stated that this WIPO arbitration (Case No: D2000-0737) has confirmed the notoriety of the trademark EUROVISION and thus can be considered a well-known service mark within all circles of the field of television broadcasting. Respondent can not see how the Complainant can come to the conclusion from WIPO-Arbitration D2000-0737 that the trademark EUROVISION is well-known. The panel certainly did not come to this conclusion. The outcome of this decision was based on bad faith solely.

b. Respondent is familiar with the term 'Eurovision' only in combination with the term 'Song Contest'. Without the addition 'Song Contest' the mere trademark EUROVISION is not well known to the public. The chance that the public might get confused as to the origin of the website under the domain name eurovision.tv or eurovisiontv.com is slim, especially because the content of the website under the domain names has clearly nothing to do with the activities of Complainant.

No bad faith

a. Complainant suggests that the fact that Respondent is using the domain name under the ccTLD .tv and is using 'tv' in the gTLD is reason to conclude that Respondent is or was familiar with the trademark EUROVISION of Complainant and acted therefor in bad faith. As in Case DTV 2000-0005 (menshealth.tv) in § 6.3 the Panel did not take into consideration the suggestiveness of the country code suffix .tv. Moreover the suffix .tv has never been exclusively reserved for use with television broadcasting related services. It is a ccTLD and because of the widespread use of it, it is being used as a sort of gLTD, recognizable for users on the internet. As a commercial enterprise Respondent did prefer the gTLD .com but this domain name was already registered (and not used!) by someone named Cezary Ian Glebocki (first registered in February 2000).

b. A second choice was the domain name <eurovision.tv>, which was still available in June 2000. All other generic domains such as <eurovision.com> and <eurovision.net> were not available anymore. As an international orientated company, Respondent has a legitimate interest in obtaining a (top level) domain that is generic. Alongside the availability of the international or generic ccSuffix ‘.tv’, Respondent has its specific and legitimate reasons to use the term 'tv' as a ccSuffix in the domain name eurovision.tv which has nothing to do with television broadcasting. The financial market in which Respondent is active is also known as 'Monitor-trade' (in Dutch: Schermen-handel) because dealers/traders/analysts and investors, to which Respondent provides services, do not physically trade but conduct their business through monitoring (physically checking the development of stockprices on tv-monitors) the stock-exchange. Using the ccTLD .tv is therefore recognizable for (potential) clients. Respondent uses the websites under the domain names (they are mirrored) as an extra service to its clients and potential clients. Typical clients are dealers, traders and analysts.

c. Because of the potential harm which can derive from allegations of the Complainant (‘hijacking’, ‘bad faith’ etc), Transtrend B.V. is not using its trademark (registered in the Benelux for financial services (only) since February 5,1998 and trademark applications for a similar Community trademark and a U.S. federal trademark and tradename TRANSTREND on the websites under the domain names yet. Respondent is a reputable well-established investment manager and advisor, licensed by the Securities Board of the Netherlands ("STE") and registered trading advisor with the Commodity Futures Trading Commission ("CFTC"). Transtrend does not wish to be involved in any procedure of this nature. Because of all allegations made to the address of Respondent and to avoid legal proceedings, Respondent wanted to settle the matter as far as the domain name <eurovisiontv.com> was concerned. This is why Respondent has offered this domain name to Complainant for the cost of transferral. The main interest of Respondent is in the domain name eurovision.tv. The domain name <eurovisiontv.com> is only meant to route visitors to <eurovision.tv> since web browsers like Microsoft Explorer and Netscape Navigator do usually append the suffix .com when the user does not specify any. Forgetting to type the . (dot) does therefor route the user to the website of Respondent as well. Apparently Complainant is not interested in this domain name since he did not react on this offer to avoid any procedures and instead started these proceedings. Again, this behaviour suggests that Complainant is not at all interested in the domain names (it is not using eurovision.org and eurovision.net!) but is more interested in exploring the limitations of its trademark EUROVISION.

d. Besides Transtrend B.V. Complainant did also involve EasyDn.com. Easyskies B.V. provides web related services and maintains the website for Transtrend B.V. EasyDn.com is involved in domain name trade. In several rulings, your Panel has stated that ‘offering a domain name for sale at a value above the cost of registration, is prima facie evidence of bad faith. Like a trade mark, a domain name is a tradable commodity, and there is no reason why a bargain should not be struck between a willing buyer and a willing seller for the legitimate transfer of a registered domain name at a value which reflects its commercial worth to the parties’, case D2000-0737, (eurovision.org), case D2000-0016 (allocation.com). Selling domain names is therefor no evidence of bad faith. These parties can therefore not be characterized as a domain name grabber or cybersquatter as Complainant did in the previous correspondence, nor can they be characterized as mala fide. They do not make it their business to register trademarks in order to enrich himself at the expense of the trademark holder, and can therefore not be compared with companies like NameSpace in the Netherlands or even with any other mala fide registrants. More important: there has never been any attempt to sell the domain names to Complainant or any intent to do so. The domain names involved were always intended to be used by Respondent and are now being used by Respondent.

e. Respondents website is – like every start-up website on the Internet -still under constant reconstruction and revision; in his website development activity Respondent adds new content and other improvements on a regular basis, as Respondent has been doing in all of its other websites as well.

Legitimate interests in the domain names

a. Since the European market is more and more an interesting market for global finance and investment; especially with the introduction of the single European currency the Euro, investment advisors like Respondent are more and more pressed to accommodate their clients who always appreciate relevant financial news and customized news services. The website under the domain names further provides a promotional tool for Respondent to focus attention on its services. Respondent specifically uses the websites under the domain names in order to keep its customers and potential customers up to date on financial issues. For this purpose Respondent keeps track of financial news on a daily basis and places hyperlinks to selected articles and websites, including its own.

b. Another purpose of the website is to keep track of the interests of the financial world in relation to the specific articles which Respondent provides hyperlinks to. Respondent keeps track of how often the site is being visited and how often the specific articles are being read. The behaviour of the visitors on the website does give Respondent a tool to get some insight on the interest that the financial world has on issues raised in these specific articles.

c. Respondent and its client do have the need to be able to create a website under a descriptive domain name that is easy to remember in order to attract as much interested visitors to its website.

d. As an advisor and provider of services in the field of finance Respondent has a legitimate interest in the domain names since Respondent uses the website under the domain names to offer extra services to its existing clients and potential clients and keeps Respondent up to date on the interests of its (potential) clients. The offering of these services is bona fide and the use of the descriptive term 'eurovision' is a logical choice for a domain name and the according website on which these services are being offered. The relevance for Respondent to make use of the domain names eurovision.tv and eurovisiontv.com is obvious: financial services provided under descriptive domain names such as eurovision.tv are more and more important to be noticed on the internet. The domain name eurovision.tv is easy to remember because of its descriptiveness in the field of particular financial services and the vision an advisor in this field may have.

e. Respondent does not infringe any (trademark) right of Complainant, since she operates under the domain name a website that is fully devoted to the Euro, the European currency and to Europe. Respondent uses the word ‘Eurovision’ therefore in the strict literal sense, namely (a) vision on the Euro and on Europe. Under trademark law, Respondent can invoke therefore ‘due cause’ as mentioned in article 13A, section 1 under c and b of the Benelux Trademark Act (BTA).

Complainant has no interest in the domain names

a. Complainant has won its WIPO-case (D2000-0737) about the domain name eurovision.org: the panel concluded that this domain name should be transferred to Complainant EBU. As a supranational semi-governmental organization this domain name should suffice to be noticed on the Internet. Moreover Complainant did also register the domain name eurovision.net. Respondent does not understand why Complainant still needs the domain names <eurovision.tv> and <eurovisiontv.com>. Complainant is not using its domain names <eurovision.org> or <eurovision.net> and instead uses the domain name <songcontest.com> to promote its Eurovision Song contest on the internet.

b. Clearly Complainant wishes to explore how far its trademark-rights will stretch. As far as Respondent is concerned: no further since the trademark EUROVISION is descriptive and can be legitimately used for domain names for services that do not relate to the services for which the trademark of Complainant is registered.

A refutation of the arguments made by Complainant concerning the manner in which the domain name(s) is/are allegedly identical or confusingly similar to a trademark or service mark in which the Complainant claims it has rights.

See also above Complainant dismisses the fact that its Service Mark and reputation are only valid, if valid at all, in the field of broadcasting (class 9 and 38). The visitors who by mistake visit the website of Respondent are not at all likely to be potential clients of Respondent. Respondent is not at all interested, merely bothered, by the (assumed) attention of visitors interested in television broadcasting services or the Eurovision Song Contest. Since the domain name is descriptive for the services that are provided on the corresponding web site, there can be no confusion as to the identity of the holder of domain name and the owner of the trademark EUROVISION. The same applies to the services that are provided. Respondent focuses on financial services while Complainant provides broadcasting services, therefor confusion is very unlikely and there is no actual evidence that the public does confuse both Complainant and Respondent (or their different services) because of the similarity between trademark and domain name.

A refutation of the arguments made by Complainant as to why Respondent should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the Complaint. Evidence should be submitted in support of any claims made by Respondent concerning its alleged rights or legitimate interests in the domain name(s);

c. See also above Respondent challenges any accusations from the Complainant as if the website is a hoax. It is not, frequent visits to its website confirm that it is updated on a daily basis. The website of Respondent (www.transtrend.com) and the annexes to the response confirm that Transtrend B.V. is highly appreciated as an investment advisor and does business all around the world. It can count some of the largest banks and investors amongst its clients. Transtrend B.V. is not in the business of buying and selling domain names and uses certain domain names for legitimate purposes. Complainant has not shown any evidence to prove otherwise, Complainant’s allegations are based on assumptions which are being brought up for the sake of argument.

d. As a whole Complainant did not establish that Respondent has no rights or legitimate interests in the domain names.

A refutation of the arguments made by Complainant as to why the domain name(s) should be considered as registered and used in bad faith.

e. See also above Complainant’s negative portrayal of Respondent is not based on any actual facts, but on preoccupied assumptions. The saying ‘the loudest mouth is most uncertain’ is true here. And it must be said that the rash and blunt allegations made by Complainant of ‘domain name grabbing’, ‘cybersquatting’ ‘blatantly misleading’ ‘mala fide’ took Respondent aback at first. Because it is very important for Respondent to have an unblemished reputation Respondent did offer one of the domain names, for the cost of transferral, to Complainant, who did not react on this offer at all but instead initiated these proceedings.

f. Complainant aims its arrows on the fact that the domain names have been offered for sale on the website of EasyDn.com. Above all: the activities of EasyDn.com / DomainXelect.com have nothing to do with the activities of Respondent! The fact that these domain names were advertised as being for sale was a mistake. There has no intention to sell these particular domain names. Complainant has never received any offer to this intent. A quick look at the web site of EasyDn.com and its offerings reveal that none of the domain names listed have anything to do with well-known trademarks. EasyDN.com is a subdivision of Easyskies that lists domain name for commercial purposes on behalf of the registrant Easyskies. Easyskies primarily looks for domain names that have some descriptive element in them and are for this reason interesting commodity. Furthermore, Easyskies registered a great number of domain names with a financial meaning only. Trading such domain names is legitimate and allowed under Dutch law and WIPO rules (and Decisions like the one mentioned before D2000-0737 and D2000-0016). Also when a domain name is similar to a trade name or a trademark there is not necessarily an infringement. There can only be an infringement when a domain name does intentionally profit from the notoriety of the trade name or trademark or the domain name holder intentionally denies the trademark/trade name owner the use of the domain name in order to disrupt its business.

g. EasyDn.com has registered about a thousand domain names. The domain names involved in this procedure have been registered and paid for by Respondent (The son of the executive director of Respondent is running EasyDn.com as well as Easyskies) but as a result of an installation error, the domain names have been mixed up with the other domain names of EasyDn.com. Even the domain names of other active websites <transtrend.com> and <easyskies.com> were wrongfully attached to the website of EasyDn.com. As soon as this was discovered the domain names have been removed from the list on the EasyDn.com website. This has been done before March 30, 2001, ! Respondent does not understand how Complainant could produce an outprint as exhibited to the Complaint. One explanation could be that while checking the EasyDn.com website, Complainant did not use the refresh button in the web browser (Microsoft Explorer or Netscape Navigator). Not doing so can cause the web browser to show an old web page (from stored memory) with a new date on the outprint. What is presented is therefor not genuine although Complainant might be genuinely convinced that it is for real.

h. Nevertheless Complainant overlooks the fact that while the domain names were mistakenly being presented on the EasyDn.com web site as being for sale, they have never been offered to Complainant directly or to any of its competitors. This is understandable because these domain names were never meant to be sold to anyone other than Respondent and its client for their own activities in the field of financial services. Respondent is not a competitor of Complainant and would not withhold the domain names from Complainant to disrupt Complainants' business or in order to prevent Complainant from reflecting its trademark in a corresponding domain name. Besides that Complainant was already awarded the domain name <eurovision.org>by WIPO panel decision D2000-0737 and has registered the domain name <eurovision.net>. Complainant is not using those domain names with the word ‘eurovision’ in it (for example: in the Netherlands ‘eurovision.nl’ and ‘eurovisie.nl’ are registered by other registrants) but instead uses the domain name: <songcontest.com> and <ebu.ch>. It is obvious why Complainant uses the term ‘Songcontest’ to position herself, since, unlike the mere designation ‘Eurovision’, ‘Songcontest’ is a well-known term for a song contest that was initially organized for European countries only but is now open for countries outside Europe as well (Israel hosted last year’s Song Contest and Russia participates in the contest).

Complainant did not prove that according to Paragraph 4(b)of the Policy the domain names have been registered and are being used in bad faith. 1) The domain names were not intended for the sole purpose to sell to Complainant or any of its competitors. 2) The domain names were not registered by Respondent in order to prevent Complainant from using it and Respondent has not engaged in a pattern of such conduct. 3) Respondent is not a competitor of Complainant. Respondent is in the business of financial business, which has nothing to do with the business of Complainant. 4) Respondent does not intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. There is no trace of any connection with the activities of Complainant and Respondent is not seeking the attention of Internet-users that are in any way interested in the Eurovision Song Contest. 5) Complainant did not show any evidence to prove that Respondent did act in bad faith."

 

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

The Response makes it clear that the user of the domain names, Transtrend BV (CEO Mr. G Van Vliet), is very concerned to ensure that it is not deemed to be a party to this proceeding. The Panel accepts that for formal purposes the Respondent is correctly identified, it being the registrant of the Domain Names at the time these proceedings were commenced. Nonetheless, for the same reason that the Respondent in its Response uses the term "Respondent" to refer to both the Respondent and Transtrend BV and given too that Mr. Van Vliet appears to have been a prime mover behind all the original registrants as well as the Respondent, for all practical purposes in relation to this proceeding it makes sense to treat all those entities as one and the same. The Panel proposes to do just that.

Identical or confusing similarity

The Domain Names comprise in one shape or form the name "Eurovision", which is an important name and trade mark and service mark of the Complainant, and the letters "tv" which for most purposes are regarded as an abbreviation of the word "television". The fact that in one of the Domain Names the letters "tv" appear as an abbreviation for the island of Tuvalu is irrelevant.

The Panel acknowledges that the Complainant’s trade mark registration is for a device incorporating the word "Eurovision" and not for the word itself. However, "Eurovision" is a prominent element of that registered trade mark and certainly in the expression "Eurovision Song Contest" the name Eurovision is widely known throughout Europe as being a reference to the organizer of that contest, namely the Complainant.

The Panel finds that the Complainant has rights in the trade mark and service mark Eurovision in relation to television related services and that the Domain Names, both of which feature the letters "tv" in association with "Eurovision", are confusingly similar to a trade mark and service mark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

The Respondent is not known by the name Eurovision and provides no genuine service (commercial or non-commercial) under or by reference to the name Eurovision. The Respondent is no more connected with television than anybody else who uses computers.

If, when registering the Domain Names the Respondent or its predecessors had had any serious intention of registering Domain Names indicating an interest in the Euro, there are any number of other combinations that would have been more apt than the Domain Names.

Those responsible for registering the Domain Names must have had the Complainant in mind when effecting those registrations. The Panel finds it inconceivable that a sophisticated commercial operation of the kind that the Respondent and its predecessors claim to be could not have appreciated that when they were registering the Domain Names they were registering domain names clearly and exclusively referable to the Complainant i.e. names in which they could have no legitimate interest.

The Policy in paragraph 4(c) provides the Respondent with a number of examples of circumstances, which if found by the Panel to be present, will constitute demonstration of rights and/or legitimate interests in respect of the Domain Names. The Respondent has made no serious attempt to demonstrate any of those circumstances.

The purported justification for the inclusion of the letters "tv" in the Domain Names does not stand up to scrutiny. Initially the Respondent’s representative when providing an explanation to the Complainant ignored the existence of the <eurovisiontv.com> domain name and said that the <eurovision.tv> domain name was selected in the .tv domain because there was no other top level domain available. The fact of the matter is that if the Respondent needed to select an alternative domain, being a country domain, there are many domains closer to home than the island of Tuvalu. The fact that the <eurovisiontv.com> domain name was registered makes it plain that the "tv" element of the names was regarded as being an important part of the Domain Names. Contrary to the impression given by the Respondent’s representative, the choice of the Tuvalu domain was deliberate and not a fall-back position. The Complainant then draws to the Respondent’s representative’s attention that "tv" indicates television services and that the Respondent and its predecessors have no connection with television services. The Respondent’s representative responds by explaining that the Respondent’s services do involve television because market quotes are provided on tv screens. In the view of the Panel that explanation is disingenuous.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of the Domain Names in bad faith.

The Complainant relies in part on paragraph 4(b)(i) of the Policy stating that the evidence supports the contention that the Respondent’s intention was to sell the Domain Names for a valuable consideration in excess of the Respondent’s out-of-pocket expenses. The Panel is of the view that it is quite likely that the registrations were made for that purpose. While the Respondent has given evidence of a mistake in relation to the names up for sale on one of the websites associated with the Respondent, for reasons given below the Panel is unable to accept the Respondent’s evidence with confidence.

However, quite apart from that evidence, the Panel is of the view that ultimate sale was the likely intent of the Respondent and its predecessors, partly because that is often the only reason that anybody would deliberately register the name of another without justification, partly because the Respondent and its predecessors made no attempt to use the Domain Names until after the Complainant had first raised the complaint with them, and partly because when the "use" did commence it was, in the view of the Panel, a hasty use of convenience rather than a genuine use.

The Panel does not believe the Respondent and its predecessors intended to block the Complainant within the meaning of paragraph 4(b)(ii) of the Policy otherwise than as part of an intention to sell the Domain Names to the Complainant.

Another possibility is that the Respondent and its predecessors intended to use the Domain Names to attract visitors to its website, the visitors believing that they were visiting a website of the Complainant. If the intention of the Respondent and its predecessors was, as they claim, to make a genuine commercial use of the Domain Names connected to a website, then the Panel believes that that was the likely motivation.

In the result the Panel finds that if the Respondent and its predecessors had no intention of using the Domain Names, registration was with a view to selling them to the Complainant for a valuable consideration in excess of their out-of-pocket expenses. If on the other hand the Respondent and its predecessors intended to make genuine commercial use of the Domain Names, it was for commercial gain and with the intention of attracting visitors to their website who were intending to visit a website of the Complainant (i.e. a deceptive use within the meaning of paragraph 4(b)(iv) of the Policy).

The Panel has been reinforced in its belief that the registration and use of the Domain Names has been in bad faith by the nature of the reasons put forward by and on behalf of the Respondent and its predecessors for selection of the Domain Names and by the manner in which Transtrend BV and its acting CEO, Mr. Van Vliet, conducted themselves in their communications with WIPO in April/May and quoted above. In the case of the former the reasons given were, in the view of the Panel, disingenuous and in the case of the latter the behaviour was, to say the least, irresponsible. In both cases it was not conduct consistent with a good faith approach to the Domain Names.

The Panel finds that the Domain Names were registered and are being used in bad faith.

 

7. Decision

In light of the foregoing findings namely that the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interest in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith, the Panel directs that the Domain Names, <eurovision.tv> and <eurovisiontv.com> be transferred to the Complainant.

 


 

Tony Willoughby
S
ole Panelist

Dated: June 6, 2001