The Complainants are ITV plc (“First Complainant”), ITV Network Limited (“Second Complainant”), and ITV Consumer Limited (“Third Complainant”) each of London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang, United Kingdom of Great Britain and Northern Ireland, (collectively “Complainants”).
The Respondent is NA, Luca Mueller, Unterfoehring, Bavaria, Germany.
The disputed domain name <itviplayer.com> is registered with About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 19, 2010, the Center transmitted by email to About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com a request for registrar verification in connection with the disputed domain name. On February 25, 2010, About Domain Dot Com Solutions Pvt. Ltd. d/b/a “www.aboutdomain.com” transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on April 23, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
With the consent of the Panel and pursuant to the Procedural Order annexed hereto, Complainants filed an Amended Complaint on May 4, 2010. Respondent did not reply to the Procedural Order.
The First Complainant is a United Kingdom (“UK”) public listed company and is the operator of the biggest commercial television network in the UK. It operates through a number of subsidiary companies including the Second and Third Complainants. It claims to invest around £1 billion per year in network and regional content which are funded by advertising and sponsorship revenues. Second Complainant is concerned with the ownership of broadcast rights and scheduling of the various programmes broadcast through the ITV network. Third Complainant is concerned with the commercialisation and exploitation of ITV's intellectual property including its trademarks. Second Complainant is the owner of several United Kingdom and foreign trademark registrations, including European Community Trademark registrations consisting of, or including the letters ITV. The earliest of these registrations dates from December 1996. Second Complainant is also the owner of UK registrations of the trademark ITV PLAY registered from June 2006. Complainants operate a website-based video on demand service under the name ITV Player which is accessible through Complainants' website at <www.itv.com/itvplayer>. Second Complainant is also the holder of the domain name <itvplay.com> and <itv.play.co.uk>, <itv.org.uk>. Third Complainant is the owner of the domain name <itv.com> which resolves to Complainants' principal website. The domain name <itvplay.co.uk> is owned by ITV Productions Limited another subsidiary of First Complainant.
The disputed domain name resolves to a website which purports to be “For resources and information on ITV programmes and ITV”. It provides tabs for items such as “ITV Programmes”, “ITV Sport”, “ITV News”, “ITV Weather”, “BBCTV”, and several further “ITV” tabs. Clicking on any of these tabs does not however lead to an ITV site (or a BBC site) but rather to several sponsored links to third party sites, many of which offer television related goods and services.
Complainants claim to have rights in the trademarks ITV and ITV PLAY and that the disputed domain name is identical or confusingly similar to Complainants' trademark ITV PLAY, differing from it only by the insignificant addition of the letters “i” and “er”. Complainants further submit that the disputed domain name wholly contains Complainants' ITV trademark and that the disputed domain name is highly likely to create confusion on the part of the public. Complainant contends that the disputed domain name is identical or confusingly similar to Complainants' ITV and ITV PLAY trademarks.
Complainants submit that Respondent has no rights or legitimate interests in respect of the domain name. Complainants show that Respondent uses the domain name to resolve to a website which purports to link to Complainants' products and services but which in fact points to the products and services of others including persons offering products and services in the same field as, and in competition with, Complainants. Complainants assert that Respondent is not in any way related to Complainants, is not commonly known by the disputed domain name and has not been authorised by Complainants to use the domain name.
Complainants further contend that the disputed domain name was registered and is being used in bad faith in order to prevent Complainants from reflecting their ITV PLAY trademark in a corresponding domain name, and primarily for the purpose of disrupting Complainants' business. They further contend that Respondent is attempting intentionally to attract Internet users to its website by creating the likelihood of confusion with Complainants' ITV and ITV PLAY trademarks and has done so for commercial gain. Complainants contend that they are famously associated with the provision of television services provided online or via a global communications network and that their rights and reputation in their trademarks, and the services which they provide under them, pre-date by several years Respondent's registration of the disputed domain name. Complainants submit therefore that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainants' contentions.
First Complainant is the owner and operator of an extensive and world renowned television network and production company which operates under the trademarks ITV and ITV PLAY. Second Complainant is the owner of several registrations of those trademarks, and Third Complainant is also a subsidiary of First Complainant. The Panel finds that Complainants have established that they have rights in the trademarks ITV and ITV PLAY.
The disputed domain name comprises the mark ITV with the addition of the letters “player”. The dominant distinctive element of the disputed domain name is the letters ITV and persons seeing the disputed domain name would inevitably be likely to assume that it had some connection with the well-known television network and producer. The disputed domain name also incorporates Complainants' ITV PLAY trademark, with the addition only of the letter “i” and the suffix “er”. In the opinion of the Panel internet users seeing the domain name would conclude that it was owned by, or associated with Complainants, and further, that it was associated with the service offered by Complainants under the trademark ITV PLAY and through its website at <www.itv.com/itvplayer>.
The Panel therefore finds that the disputed domain name is confusingly similar to trademarks in which Complainants have rights.
The Panel accepts Complainants' assertion that Respondent is not related in any way to Complainant, and it is apparent from the website at the disputed domain name that the use being made of it is not legitimate or non-commercial fair use. There is no likelihood that Respondent would be commonly known by the disputed domain name, and the use which is being made of the disputed domain name is not a use in connection with the bona fide offering of goods or services. As further discussed below, Respondent's adoption of a domain name incorporating Complainants' well-known trademarks to provide a portal service to point to providers of goods or services, some of which are in competition with Complainants, cannot be use in good faith in the offering of that service. “Use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods and services” – see Madonna Ciccone, p/k/a Madonna v Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name.
At the time of registration of the disputed domain name, January 24, 2008, Complainants were already well established in the field in which, almost by definition, their name, trademark and reputation would be almost universally known throughout the world and certainly throughout the European Community. In light of the circumstances, it is inconceivable therefore that Respondent could have adopted a domain name incorporating the specific combination of the letters forming Complainants' trademark purely by chance. The inevitable conclusion therefore is that Respondent adopted the domain name knowing of the rights and reputation of Complainants and with the desire to profit thereby. Respondent acted in bad faith by establishing a portal website at the domain name which incorporates tabs which appears to be linked to services provided by Complainants, but which in fact leads to the websites of third parties, some of whom are competitors with Complainants. The only reasonable conclusion is that Respondent aims to profit by “per click” payment when users access the site either because of a belief that it is a genuine domain name of Complainants or accidentally through a mistyping of Complainants' domain name.
Respondent has been served with the Complaint and the Amended Complaint and has been afforded every opportunity to respond to Complainants' allegations and to rebut the presumptions which inevitably flow from them. Respondent has failed to do so.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <itviplayer.com> be transferred to Complainants.
Desmond J. Ryan AM
Dated: May 6, 2010