The Complainant is ITV Consumer Ltd of London, United Kingdom of Great Britain and Northern Ireland, represented by Jade Macintyre of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Xinxin Cao of Shanghai, People's Republic of China and Primeroweb/Mark Venables of Tenerife, Spain.
The disputed domain names <itviplayer.net> and <itvplayeronline.com> are registered with eNom.
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 eNom a request for registrar verification in connection with the disputed domain names. On February 19, 2010, eNom 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 March 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 30, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 13, 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.
The Complainant is a subsidiary of the largest commercial television network in the United Kingdom. The parent company spends considerable sums of money on programming content and distributes much of that programming on a global basis through various subsidiaries. The Complainant provides the programming via the Internet through its “ITV Player” service and owns trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the marks TV PLAYER (Registration No. 2500190, issued February 20, 2009); and ITV NET PLAYER (Registration No. 2500188, issued February 20, 2009).
The Respondent registered the disputed domain names <itviplayer.net> and <itvplayeronline.com> on October 22, 2009. The website found at those domain names provides links to third party websites that offer services that compete directly with the services offered by the Complainant.
The Complainant is one of many subsidiaries of the largest commercial television network in the United Kingdom. Its parent company spends approximately GDP1 Billion on television content per year and distributes its products globally through various subsidiaries. The parent company also distributes on-demand programming through Internet avenues, including the service “ITV Player”.
The Complainant owns UKIPO registrations for the trademarks ITV PLAYER and ITV NET PLAYER. Also, the Complainant's sister subsidiary companies own many UKIPO registrations for various forms of the mark ITV. Moreover, many similarly worded domain names, including <itvplayer.co.uk>, <itvplay.co.uk> and <itvplay.com> are under the Complainant's ownership and were registered prior to the disputed domain names.
The disputed domain names are virtually identical to the Complainant's registered marks, displaying only inconsequential differences by the addition of gTLDs, the word “online” and the letter “i”.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant does not allow the use of its marks by other parties, and takes immediate legal action against any attempts at such usage. By virtue of the filing of a UDRP complaint by the Complainant against the Respondent concerning similar domain names a day prior to registration of the disputed domain names, the Respondent was well aware of the Complainant's rights in its trademarks.
On its website mounted in connection with the disputed domain names, the Respondent has copied elements of the Complainant's websites and provided links to third party competitors that offer digital television services. As the Respondent has no public or legitimate association with the Complainant's marks, it is inconceivable that the Respondent has become commonly known by the confusingly similar disputed domain names. Furthermore, since the Respondent re-directs Internet traffic to third party websites for commissions, the Respondent is not applying the disputed domain names for noncommercial or fair use.
The disputed domain names were registered and are being used in bad faith. The Respondent runs afoul of all the circumstances listed in Policy paragraph 4(b). In particular, the Respondent has a long history of registering domain names that infringe on the rights of well-known media companies (e.g., <skyiplayer.net>, <msnreviews.com>, <appistore.com> and <bbcplayer.net>), and seeks commercial gain from creating Internet user confusion by utilizing websites on domain names that are confusingly similar to the Complainant's established trademarks.
The Respondent's use of the word “unofficial” on its website connected to the disputed domain names does not in any manner mitigate the Respondent's bad faith use of the names.
The Respondent did not reply to the Complainant's contentions.
In accordance with Policy paragraphs 4(a)(i), (ii) and (iii), the Complainant may prevail in these proceedings and gain a transfer of the disputed domain names, <itviplayer.net> and <itvplayeronline.com>, providing the Complainant can demonstrate that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names have been registered and are being used in bad faith.
The Respondent did not file a Response, thus the Panel will accept the validity of the Complainant's reasonable contentions, unless contradicted by irrefutable evidence contained elsewhere in the record or within the independent knowledge of the Panel. The Panel will draw such inferences as are appropriate from those contentions. See, Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398 (“Respondent has not reacted to the Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.”); and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”).
By furnishing the Panel with appropriate evidence (Annex 7) of its valid UKIPO registrations for ITV PLAYER and ITV NET PLAYER, the Complainant has established its rights in those marks for the purposes of Policy paragraph 4(a)(i). See, The Royal Bank of Scotland Group plc v. Teddy Jackson, NAF Claim No. 992134 (“Complainant has established rights in the RBS mark pursuant to Policy [paragraph] 4(a)(i) through registration of the mark with the UKIPO.”); and Lotus Group Ltd v. Moniker Privacy Services/Total Net Solutions, WIPO Case No. D2008-0744 (“Complainant has demonstrated ownership of service mark rights in the United Kingdom for DIAL-A-FLIGHT and DIALAFLIGHT through registration and use in commerce…” [emphasis added]).
The disputed domain name, <itviplayer.net>, is nearly identical to the Complainant's ITV NET PLAYER mark, except for the addition of the letter “i” midway in the name and the inclusion of the word “net” as a gTLD instead of being positioned in the middle of the full phrase. Meanwhile, the disputed domain name, <itvplayeronline.com>, merely adds the word “online” and the gTLD “.com” to the Complainant's ITV PLAYER mark.
While these alterations may avoid identity between the names and marks, they do not prevent confusing similarity. The ordinary Internet user could easily type in an extra “i” to obtain the Respondent's website when searching for that of the Complainant, or believe that “online” is a perfect description of where to find the Complainant's materials as those are delivered online through the “ITV Player” service. Consumer confusion between the disputed domain names and the services provided by the Complainant under its duly registered similar trademarks is inevitable. As a result, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademarks. See, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (where the panel, in finding that the additional “o” in <microosoft.com> did not prevent a finding of confusing similarity with the mark MICROSOFT, stated: “Disputed domain names with misspelled variations of trademarks have been held to be “confusingly similar” in many WIPO cases.”), and Royal Bank, supra (“The <rbsonline.org> domain name incorporates Complainant's entire RBS mark and merely adds the term “online” and the generic top-level domain “.org.” The Panel finds these additions to Complainant's registered mark insufficient to differentiate the disputed domain name from the mark pursuant to Policy [paragraph] 4(a)(i).”).
Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As the Respondent has not replied to the Complaint, there is little suggestion in the record as to how the Respondent could have rights or legitimate interests in the disputed domain names under paragraphs 4(c) of the Policy.
The Complainant has furnished the Panel with evidence that the Respondent uses the disputed domain names for a website that provides links to third party competitors of the Complainant, which practice is almost always for commercial gain and not for “noncommercial or fair use” as contemplated under paragraph 4(c)(iii). Moreover, there is not even the slightest indication of how the Respondent, “Xinxin Cao, Primeroweb/Mark Venables”, might come to be commonly known as either of the disputed domain names <itviplayer.net> or <itvplayeronline.com> so the Panel must rule out the applicability of paragraph 4(c)(ii).
Finally, the sort of use to which the Respondent has put the disputed domain names, as described above, has been found by countless prior Policy panels to be something less than “a bona fide offering of goods or service” as allowable under paragraph 4(c)(i). For example, see, MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (“[t]he Domain Name […] resolves to a page that displays links to Complainant's competitors. This is not a bona fide use.”); and Mattel, Inc. v. Domain Park Limited, NAF Case No. 1164348 (“Respondent is using the [disputed] domain name to display hyperlinks to…third-party websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made a bona fide offering of goods or services under Policy [paragraph] 4(c)(i)…”).
The Complainant does indeed bear the burden of proof as to this element. However, the Complainant's sharp and, in the Panel's opinion, believable contention that it granted the Respondent no authority or permission to use the Complainant's trademarks in any manner presents a prima facie case in its favor, which the Respondent and the record have failed to rebut. See Mastercard, supra (“Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.”); and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In line with the above reasoning, the Panel determines that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(b) of the Policy delineates four separate circumstances that call for a finding of bad faith registration and use of the disputed domain names as follows:
(i) circumstances indicating that [the respondent has] registered or [the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location.
In seeking application of paragraph 4(b)(ii), the Complainant draws the Panel's attention to the fact that the Respondent has registered a number of domain names that appear to mirror the well-known trademarks of other media companies as well as those of the Complainant. However, the Panel notes that none of the names pertaining to such other companies has been the subject of a UDRP panel decision, thus the Respondent has never been found to have engaged in bad faith with respect to the registration and use of those names.
The Respondent (absent “Xinxin Cao”) did suffer an adverse ruling with respect to names quite similar to the disputed domain names in a recent Policy case brought by the Complainant. See, ITV Consumer Limited v. Primeroweb, Mark Venables, WIPO Case No. D2009-1409 (where the transferred disputed domain names were <itvplayer.info> and <itvplayer.net>). But, though the Respondent may have been involved in previous UDRP cases, the Panel is not ready to conclude that this is a pattern sufficient to invoke paragraph 4(b)(ii). Moreover, since the Complainant has averred to its ownership of many domain names, the Respondent does not seem to have acted in a manner to deprive the Complainant from reflecting its trademarks in corresponding domain names.
With respect to paragraph 4(b)(iv), the Panel reaches a different conclusion. Based on the Complainant's uncontested evidence, the Panel believes that the Respondent is using the disputed domain names for websites that contain material referring to the Complainant and that offer links to third party competitors of the Complainant. This action is most likely for the purpose of commercial gain through the Respondent's receipt of so-called “click-through” fees. Obviously, the commercial gain is due to likely Internet user confusion as to whether the disputed domain names are operated, sponsored, affiliated or endorsed by the Complainant. Ergo, the Panel determines that the Respondent's use of the disputed domain names fits neatly into the circumstance set forth in paragraph 4(b)(iv) of the policy. See, Symark International, Inc. v. Gary McCurty, WIPO Case No. D2005-0235 (“Complainant has demonstrated that the disputed domain name generates income to the Respondent by inducing Internet users to click through to sponsored links. Such use of the domain name in dispute establishes the “bad faith” practice which the Policy expressly prohibits.”); and Bank of American Fork v. Jinyang Shen, NAF Claim No. FA699645.
In view of the above, the Panel rules that the Complainant has demonstrated that the disputed domain names were registered and are 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 names <itviplayer.net> and <itvplayeronline.com> be transferred to the Complainant.
Dennis A. Foster
Dated: April 27, 2010