WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ENDEMOL Entertainment UK Plc v Guido SCHERPENHUYZEN
Case No. DTV2001-0023
1. The Parties
Complainant is ENDEMOL Entertainment UK Plc, a corporation organised under the laws of the United Kingdom, having its principal place of business in London (Shepherds Building Central, Charecroft Way, Shepherds Bush), United Kingdom and represented by Mr John Parsons, ("Complainant").
Respondent is GUIDO SCHERPENHUYZEN, a private individual, residing at Horgen Switzerland, and also, as stated in the Complaint, at TG 9535, Im Groettli 38, Wilen b. Wil, Switzerland ("Respondent").
2. The Domain Name and Registrar
The domain names at issue are <endemoluk.tv> and <endemolentertainment.tv>. The Registrar is Register.com Inc. (575 Eighth Avenue 11th Floor, New York, 10018) USA, ("the Registrar").
3. Procedural History
The Complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center (The "WIPO Center") on September 18, 2001. The hardcopy under cover of a letter of the same date was received on September 19, 2001, ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to Complainant dated September 19, 2001.
On September 24, 2001, the WIPO Center notified Complainant per email that the domain names were not registered with the Registrar specified in the Complaint.
On September 26, 2001, Complainant submitted per email an amended Complaint (the "Amended Complaint") to the WIPO Center in which the Registrarís name had been corrected. A hard copy of the Amended Complaint was received by the WIPO Center on September 27, 2001.
On September 28, 2001, the WIPO Center sent per email a Request for Registrar Verification. On the same date (September 28, 2001) a verification from the Registrar was received.
On October 2, 2001, the WIPO Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the parties.
On October 23, 2001, the WIPO Center sent a Notification of Respondent Default to Respondent.
On November 15, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties.
On November 27, 2001, the Panel issued an Interim Administrative Order allowing Complainant to provide evidence to show that it is entitled or authorised to invoke the trademark rights owned by Endemol Entertainment Productions GmbH and Endemol Entertainment International B.V. and JE Entertainment Productions GmbH or a Power of Attorney authorising Complainant to act in these proceedings on behalf of said trademark owners.
On December 7, 2001, Complainant filed a short additional statement and five annexes, including a copy of a Power of Attorney for Endemol Entertainment Productions GmbH. On December 13, 2001, Complainant sent the original Power of Attorney.
On January 7, 2002, the WIPO Center informed the Panel that no reply had been received from the Respondent.
4. Applicable Rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.
The Complainant states that it is part of a group of international companies including Endemol Entertainment Productions GmbH and Endemol Entertainment International B.V. (the "Endemol Group"). The trademark ENDEMOL is registered in classes 9 and 41 in 19 countries including the United Kingdom, Switzerland and the Benelux countries. The ENDEMOL trademark is registered by Endemol Entertainment Productions GmbH, Endemol Entertainment International B.V. and JE Entertainment Productions GmbH, a company which has merged to become Endemol Entertainment Productions GmbH.
Complainant uses the trademark ENDEMOL on its own or as part of the Complainantís name in connection with the production and exploitation of television programmes and formats.
The domain names <endemoluk.tv> and <endemolentertainment.tv> were registered on April 10, 2001, and March 15, 2001, respectievely. On April 10, 2001, Respondent offered the domain names < endemoluk.tv> and < endemolentertainment.tv> for sale to Complainant and provided a link to the Respondentís page on the domain name auction site <afternic.com>. On this site, Respondent offered the domain names at issue for auction for GBP 50,000 (<endemoluk.tv>) and GBP 80,000 (<endemolentertainment.tv>). The offers included the following comments: " is less than 1% of what they make per year. Look at www.endemoluk.com before appraise" and "Thatís worth it!"
On April 30, 2001, Respondent emailed Complainantís chief executive the following email:
"Dear Mr. Barnicoat
You are ignoring the fact, that your customers will sooner or later try www.Endemoluk.TV, because all major TV-Stations around the world are using .TV Domains. Only your Customers will be lead to www.sex.com, which isnít the propriet reference for you. This behaviour is not professional! Looking forward hearing from afternic.com, that you made me an acceptable OfferÖ"
At first, as from April 30, 2001, Respondent linked the domain name "endemol.tv" to a pornographic website (<sex.com>). As from August 13, 2001, Respondent linked the domain name <endemoluk.tv> directly to a "neonazi" site <stormfront.org>.
On September 7, 2001, Respondent sent Complainant an email with the heading "Ruin the reputation of Endemol on the web". In this email Respondent states among others the following:
"It seemed not to touch you that over 10í000 Web users used Endemoluk.TV to look at www.sex.com. It was a big success!
That Neo-Nazis start to use <www.Endmoluk.TV> to secretly contact <www.stormfront.org> doesnít bother you either.
I canít understand why you donít make any offer for <www.Endemoluk.TV> and <www.EndemolEntertainment,TV>, since <www.Endemol.TV> is bought by Ďyouí. I assure you, that I will keep the Domains until the end of time if necessary. And they wonít get any cheaper by time."
On September 12, 2001, Complainant emailed Respondent to immediately arrange for the transfer of both domain names in question to Complainant and offering to refund Respondentís out-of-pocket expenses for this transfer.
On September 14, 2001, Susie Bird, on behalf of Complainant, telephoned Respondent. Respondent confirmed that he was the registered owner of the domain names at issue. Ms Bird offered Respondent GBP 50 for the transfer of the domain names. Respondent refused to transfer the domain names, stating that the price was not enough.
On September 17, 2001, Respondent sent an email to Complainant with the following text:
"Thank you for letting your assistant call me and let me know, that you would like to buy the Domains www.Endemoluk.TV and www. EndemolEntertainment.TV from you own pocket money. As much as $50 must be a big effort for you!
What could I do with such a big amount of Money? Go to the Cinema with my wife and have an Ice cream afterwords? Wow!
Donít make a fool of yourself. If you want to make me a serious offer please use the afternic service http://www.afternic.com/index.cfm?a=a&listid=1999417"
Complainant states that the domain names <endemoluk.tv> and <endemolentertainment.tv> are confusingly similar to the ENDEMOL trademark. Complainant asserts that Respondent has no right or legitimate interest in the domain names at issue and that Respondent has registered and used the domain names <endemoluk.tv> and <endemolentertainment.tv> in bad faith as Respondent intends to tarnish the trademark ENDEMOL and/or Endemol Entertainment by linking the Domain Name <endemoluk.tv> to the websites <sex.com> and <stormfront.org>. Furthermore, Respondent has registered the domain names for the purpose of selling the domain names to Complainant or a third party for an amount in excess of Respondentís documented out-of-pocket expenses as directly related to the domain names.
As Respondent has not submitted a Response, Complainantís contentions are not contested.
6. Due Process
Where, as in this case, Respondent does not submit a Response, the rules of due process require the Panel to verify, to the extent possible, that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documentation, that this is the case. After Complainant had filed the Complaint to the WIPO Center, Respondent sent several emails to the Case Manager requesting information about the possibilities of transfer of the domain names. From this correspondence with the WIPO Center, it can be concluded that Respondent has received the WIPO Centerís Notification of Complaint and Commencement of Administrative Proceedings, Notification of Respondent Default and [the additional evidence of Complainant].
The Panel therefore assumes that Respondent has chosen not to respond.
Complainant must provide evidence of all elements of Paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
a. Trademark rights
Complainant has provided trademark registration certificates of registration in various countries by Endemol Entertainment International B.V., Endemol Entertainment Productions GmbH and JE Entertainment Productions GmbH. Complainant has also provided an power of attorney from Endemol Entertainment International B.V. and Endemol Entertainment Productions GmbH, said documents authorising Complainant to act on their behalf as trademark owners in this case. Complainant has also provided evidence with regard to the change of name of Endemol Entertainment International B.V. to Endemol B.V. and of the merger of JE Entertainment Productions GmbH and Endemol Entertainment Productions GmbH.
b. Identical or confusingly similar
The domain names at issue consist of a combination of the element "ENDEMOL" and the abbreviation "uk", the noun "entertainment" and the suffix ".tv", which indicates that the Domain Name has been registered in the ".tv" ccTLD.
The Panel finds that the domain name is confusingly similar to Complainantís trademark ENDEMOL. It is clear that in this combination the (well-known) and distinctive trademark ENDEMOL stands out so that the public is lead to believe that the domain name is somehow connected to the ENDEMOL trademark. The ability of the words "uk" and "entertainment" to distinguish the domain names from Complainantís trademarks are limited. The Panel finds that the Respondent has not created a new or different mark in adding these suffixes and that this addition does not alter the likelihood of confusion with Complainantís trademarks.
c. Rights or legitimate interests
Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The domain names <endemoluk.tv> and <endemolentertainment.tv> have only been used by Respondent to provide links to pornographic and neo-nazi websites. In addition, Respondent has offered both domain names at issue for sale to Complainant and to other third parties for amounts significantly in excess of the out-of-pocket expenses for registration. This use does not create a right or legitimate interest in the domain names at issue. Any interest in acquiring income by renting or selling a domain name is not legitimate when the domain name is confusingly similar to a trademark, and the Registrant intends to sell it to the trademark holder, as is the case here. Providing links to other websites does not constitute a legitimate interest in this case, as the domain names at issue are confusingly similar to Complainantís well-known trademark and because the links to pornographic and neo-nazi sites tarnish the trademark at issue.
In the light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the domain names at issue.
d. Bad faith
Paragraph 4(b)(i) of the UDRP states that circumstances indicating that a Respondent has registered a domain name primarily for the purpose of selling or renting it to a Complainant for a monetary consideration in excess of Respondentís out-of-pocket expenses directly related to the domain names shall be evidence of registration and use of a domain name in bad faith.
The Panel finds that these circumstance are present here. Respondent has offered the domain names at issue for sale at domain name auction sites for GBP 50,000 (<endemoluk.tv>) and GBP 80,000 (<endemolentertainment.tv>). These asking prices are significantly in excess of Respondentís out-of-pocket registration expenses. Moreover, Respondent has on more than one occasion offered the domain names at issue for sale directly to Complainant for prices significantly in excess of Respondentís out-of-pocket registration expenses.
The linking of the domain name <endemoluk.tv> to a pornographic website as well as a neo-nazi website and specifically informing Complainant regarding this, illustrates conclusively Respondentís disreputable intentions with the domain names at issue. The heading of Respondentís email to Complainant of September 7, 2001, "Ruin the reputation of Endemol on the web" speaks for itself. Furthermore, Respondent has apparently sought to blackmail Complainant into buying the trademarks by providing links to pornographic or neo-nazi sites.
The Panel, therefore, concludes that there is sufficient evidence that Respondentís registration and use of the domain names <endemoluk.tv> and <endemolentertainment.tv> has been made in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain names from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders that the registration of the domain names <endemoluk.tv> and <endemolentertainment.tv> be transferred to Complainant.
Wolter Wefers Bettink
Dated: January 13, 2002