WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Matvil Corporation v. WhoisGuard/Administrative Contact / MTONE Holding Inc.

Case No. D2010-1923

1. The Parties

The Complainant is Matvil Corporation of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is WhoisGuard/Administrative Contact/MTONE Holding Inc., of Westchester, California, United States of America and Ontario, Canada, respectively, represented internally.

2. The Domain Names and Registrar

The disputed domain names <etvnetlive.com> and <etvnetplus.com> (“the Disputed Domain Names”) are registered with eNom Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the disputed domain names. On November 11, 2010, eNom Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 30, and December 2, 2010.

The Center verified that the Complaint together with the amended 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 December 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. The Response was filed with the Center on December 25, 2010.

The Center appointed Jacques de Werra as the sole panelist in this matter on January 10, 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.

4. Factual Background

The Complainant offers online Russian TV programming services and operates the website “www.etvnet.com”¹. Based on statistical data provided by the Complainant, the “www.etvnet.com” website is accessed globally according to the following ratios: United States (47.9%), Canada (14.7%), Russia (14.6%), Norway (6.9%), Ukraine (2.7%), Germany (2.7%), Ireland (1.9%), Lithuania (1.2%), Estonia (1.0%) and the United Kingdom of Great Britain and Northern Ireland (0.5%).

The Complainant is the owner of the following trademarks (the “Trademark”): a Canadian trademark ETVNET, registration No. TMA 749,284, registered on October 2, 2009, for entertainment services, namely the development, production, distribution and broadcast of television programming, movies and documentary films via the Internet (claiming use in Canada as from November 1, 2004), a Community Trademark (CTM) ETVNET, registration No. 9004681, registered on September 29, 2010, for broadcast of television programming, movies and documentary films via the Internet (class 38) and for entertainment services, namely the development, production, distribution and broadcast of television programming, movies and documentary films via the Internet (class 41).

The Disputed Domain Names were registered on May 21, 2010. The Respondent is the registrant of an additional domain name including the full Trademark, i.e., <etvnetplus.ca> and of another domain name including part of the Trademark, i.e., <etvplus.ca>.

The Disputed Domain Names resolve to websites offering online Russian TV programming services, whereby the <etvnetplus.com> domain name resolves to a website offering online Russian programming services, which are identical to the Complainant’s services, and the <etvnetlive.com> domain name resolves to a page promoting the sale of online programming services in Russian (the promotion is made by way of a video). This website subsequently introduces the online programming services to the consumers and invites them to register. After the customer registers, it is taken to the website located at “www.tvteka.com”, which is a competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant offers online Russian TV programming services worldwide at “www.etvnet.com” which have been offered in association with the Trademark. The Complainant’s website was the first of its kind and has enjoyed tremendous success and has become known as a leader in its field.

On May 21, 2010, without the permission of the Complainant, the Disputed Domain Names were registered. The Disputed Domain Names resolve to websites offering online Russian programming services. In an attempt to deceive consumers, the websites feature the Complainant’s Trademark, as well as the element “eTV” in red with the same letter capitalization to match the manner in which the Complainant displays the mark on its website. The Respondent also issued email solicitations to the Complainant’s customers under the Trademark, resulting in actual confusion.

The Complainant is the registered owner of the Trademark and consequently has rights in the Trademark. The Complainant is also the owner of common law trademark rights for ETVNET in jurisdictions worldwide by virtue of extensive and continuous use.

With respect to the identity or confusing similarity between the Disputed Domain Names and the Trademark, the Complainant alleges that a finding that a domain name incorporates the whole of a complainant’s mark supports a finding of confusion and that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name.

In this case, the Disputed Domain Names incorporate the Trademark, and the Respondent cannot avoid confusion, as it has misappropriated the entirety of the Trademark. The fact that the Disputed Domain Names include the words “live” and “plus” does nothing to diminish confusion given that the Disputed Domain Names remain nearly identical to the Trademark in appearance, sound and in the ideas suggested. The Complainant also submits that confusion is enhanced by the addition of the words “live” and “plus” because consumers are likely to believe that the websites associated with the Disputed Domain Names are affiliated with the Complainant, and that they are being used to promote a premium version of the Complainant’s Etvnet services.

There is furthermore no evidence to suggest the Respondent has ever used, or demonstrated preparations to use, the Disputed Domain Names, or a name corresponding to same, in connection with a bona fide offering of goods or services. There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Trademark in any manner whatsoever, including in, or as part of, a domain name.

The Respondent has pointed the Disputed Domain Names to websites that compete directly with the Complainant. The Respondent’s parasitic activities have sought to deceive consumers into believing that its websites are affiliated with, or endorsed by, the Complainant, all with a view to reap a financial benefit. Under no circumstances can this intentionally obstructive behaviour be considered bona fide in nature and completely undermines a claim of legitimate interest.

Under the circumstances, the Respondent cannot claim the benefit of paragraph 4(c)(i) of the Policy. There is no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Names, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the Disputed Domain Names. Thus, the Complainant submits that the Respondent does not have a legitimate interest or rights in the Disputed Domain Names.

With respect to the registration and use of the Disputed Domain Names, the Complainant alleges that, given that the Respondent has misappropriated the Complainant’s Trademark and targeted its customers, the only plausible conclusion is that the Respondent had actual knowledge of the Trademark at the time of registration of the Disputed Domain Names, thereby supporting a finding of bad faith. In any event, and at the very least, the Respondent had constructive knowledge of the Trademark given that it is the subject of a trademark registration.

On this basis, the Complainant claims that the Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, that it has prevented the Complainant from registering the Disputed Domain Names, that the Respondent registered the Disputed Domain Names for the purpose of disrupting the business of the Complainant, and that the Respondent has used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Trademark as to source, sponsorship, affiliation, or endorsement.

B. Respondent

The Respondent first claims that the Complainant does not have legal rights for domain names containing the abbreviation “eTVnet” all over the Internet and that it has no trademark in a majority of jurisdictions, including the United States. The Complainant acquired the domain name <etvnet.com> from a previous owner in 2009, which did not have any significant traffic until the middle of 2010.

In addition, “eTV” and “net” are keywords for the type of eService that provides TV programming over the Internet. From this perspective, the words “e”, “TV” and “net” have well-established common meanings and as a result, “etvnet” used in a domain name is not a trademark because most potential clients do not consider these words as a trademark.

In addition, the eTV business technology and the content of the Complainant’s website is not unique given that most existing Russian eTV net services show similarities.

The Respondent further claims to have rights or legitimate interests in respect of the Disputed Domain Names because it has used them, before any notice of the dispute, with a bona fide offering of eTV services, whereby the primary goal of the Respondent’s project was to provide information for potential clients about eTV services on the Internet, and a pilot project was launched with the Disputed Domain Names, with emphasis on Plus (premium services) and Live TV. Further, there are no similarities between the logos and looks used on the websites linked to the Disputed Domain Names and those of the Complainant so that the visitors will not be misleadingly diverted from the Complainant’s website.

Regarding the registration and use in bad faith, the Respondent alleges that the Complaint contains no evidence to support the allegations of the Respondent’s intentions of selling, renting or transferring the Disputed Domain Names. The Respondent’s objective is rather to establish the Disputed Domain Names for eTV premium services (PLUS) and for LIVE TV service on the Internet, whereby the Respondent registered more than 12 different domain names for the project, all of which contain the words “eTV”, “Plus”, “Live”, “Rus” or “Net” in different combinations, and only three of them contain the words “etv” and “net” at the same time. The Respondent further did not have any intention to prevent the Complainant from registering names that contain “etv” and “net”. After the acquisition of the domain name <etvnet.com> in 2009, the Complainant had an opportunity to register any domain names with the abbreviation “etvnet”. As of today, many more names with words “etv” and “net” are available.

The Respondent’s project is further not related to the Complainant and should be considered as a fair competition rather than a disruption. In short, the Respondent claims that the Complainant does not have the rights for the trademark “etvnet” everywhere on the Internet, that the abbreviation “etvnet” is identical or confusingly similar to any eTV business on the Internet and that the Respondent started a bona fide offering of services a few months before the Complaint and does not have bad faith.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the Disputed Domain Names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it is the owner of the Trademark.

Complainant contends that the Disputed Domain Names incorporate the Trademark and that the addition of the descriptive terms “plus” and “live” in each of the Disputed Domain Names, respectively, does not prevent the likelihood of confusion between the Trademark and Disputed Domain Names.

The Panel finds in this respect that the use of the Trademark in conjunction with the descriptive words “plus” and “live” respectively does not affect the overall impression created by the Dispute Domain Names. The inclusion of these words consequently does not defeat the confusing similarity created by the use of the Trademark in its entirety in the Disputed Domain Names. See, by analogy, eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (relating to the domain name <ebaylive.com>) and Reckitt Benckiser Group plc v. Johnny Steel, WIPO Case No. D2009-0783 (relating to the domain name <nurofenplus.com>).

The Respondent claims in this respect that the Trademark is not distinctive and is of a descriptive nature because each of its elements “e”, “TV” and “net” have a well-established meaning and are thus generic. However, this Panel holds that this does not prevent the finding that the Trademark is valid for the purpose of application of paragraph 4(a)(i) of the Policy. Based on decisions made by previous panels, this Panel finds that the registration of the Trademark in Canada and in the European Union establishes a sufficient case for validity of the Trademark that was not rebutted by the Respondent or by the facts of the case. Accordingly, the Panel finds that the Complainant has established its rights in the Trademark for the purpose of these proceedings. See FHG Holdings Pty Ltd d/b/a Click Business Cards v. DOMIBOT, WIPO Case No. D2006-0669.

The Respondent further cannot derive any benefit from the fact that the Trademark would not be registered on a worldwide basis and particularly in all countries in which the Respondent operates given that it is sufficient for the purpose of paragraph 4(a)(i) of the Policy that the Trademark shall be registered in one country. This Panel further notes that both the Complainant and the Respondent are based in Canada. This geographic element consequently appears of no relevance here.

For these reasons, the Panel finds that the Disputed Domain Names are confusingly similar to the Trademark and that the Complainant has rights in the Trademark so that the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:

(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) respondent is making a legitimate noncommercial 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 Policy places the burden on a complainant to establish the absence of a respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative fact, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

The results from the evidence filed in these proceedings show that the Disputed Domain Names are used by the Respondent to point to online Russian TV programming services, which compete with those offered by the Complainant (whereby this is not disputed by the Respondent).

It has also been established that the Complainant has exclusive rights to the Trademark and has not licensed or otherwise permitted the Respondent to use its Trademark, particularly in the Disputed Domain Names.

The Complainant has thus established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

The Respondent claims in this respect that its primary goal is to provide information for potential clients about eTV services on the Internet. The Respondent thus claims to make use of the Disputed Domain Names in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.

However, this Panel finds that paragraph 4(c)(i) of the Policy cannot apply here because the Respondent is not using the Disputed Domain Names in connection with “a bona fide offering of goods or services”. There can indeed be no bona fide offering of goods or services when the complainant’s trademark is used by the respondent to offer or to direct customers to the products of the complainant’s competitors, in part because this constitutes a misleading use of the trademark, as well as a form of unfair competition, which is the case here. See Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946.

From this perspective, the fact that the layout of the websites respectively operated by the Complainant and by the Respondent (including the fact that the graphical design of the use of the terms “eTVNET” is not identical on them) would be different as this is claimed by the Respondent does not create a legitimate right or interest of the Respondent in the Disputed Domain Names given that these alleged differences cannot justify in any case the use of the Trademark in the Disputed Domain Names themselves.

For these reasons, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant. The Panel consequently finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names so that the conditions of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a domain name in “bad faith”:

(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that 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 respondent has engaged in a pattern of such conduct; or

(iii) that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product or service on respondent's website or location.

In this case, the Panel first notes that the Respondent does not allege that it was not aware of the Complainant’s Trademark at the time of registration of the Disputed Domain Names. The Panel further notes that the Respondent has not offered any convincing explanation which would justify the choice of the use of the name "ETVNET" in the Disputed Domain Names, knowing that this term exactly corresponds to the Trademark. As a result, no plausible explanation was given as to why the Respondent selected the name “ETVNET” as part of the Disputed Domain Names other than by reference to the Trademark and to the Complainant’s business.

In view of these circumstances, there is little doubt that the Respondent was fully aware of the Trademark prior to registering the Disputed Domain Names. This finding of the Panel is also evidenced by the fact that the Disputed Domain Names are used for services which compete with those of the Complainant.

It further results from the evidence submitted to the Panel that the Respondent has used an email address reflecting one of the Disputed Domain Names (i.e., “support@etvnetlive.com“) in order to contact Internet users (and more particularly customers of the Complainant) for the purpose of offering them services competing with those of the Complainant (which has not been disputed by the Respondent). By doing so, the Respondent has used the Disputed Domain Names in order to attract Internet users to another online location by creating a likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location within the meaning of paragraph 4(b)(iv) of the Policy. See, by analogy, BHP Billiton Innovation Pty Ltd v. Walter Surhand, WIPO Case No. D2010-0252 (respondent intentionally engaged in conduct which is misleading to Internet users by using the disputed domain name to send fraudulent emails).

As a result, it is clear to this Panel that the Respondent has, by using the Complainant's Trademark in one of the Disputed Domain Names (i.e., for <etvnetlive.com>), attempted to divert Internet users to competing websites, and has intentionally created a likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites, whereby the deliberate diversion of Internet users constitutes bad faith use, by creating confusion that takes advantage of the Complainant's and the Trademark’s goodwill.

In addition, it appears that the Respondent has registered at least two domain names including part or all of the elements of the Trademark in addition to the two Disputed Domain Names (i.e., <etvnetplus.ca> and <etvplus.ca>) so that this Panel can admit that the Respondent did so in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name, by engaging in a pattern of such conduct within the meaning of paragraph 4(b)(ii) of the Policy. See, by analogy, CMA CGM v. Moshe Nizri, WIPO Case No. D2009-1156 and Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056.

For these reasons, the Panel concludes that the Respondent was aware of the Complainant's Trademark at the time it registered the Disputed Domain Names. In addition, because the Respondent has attempted to attract Internet users to a website offering competing services and because it registered the Disputed Domain Names in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name, by engaging in a pattern of such conduct, the Panel further finds that the Respondent has used the Disputed Domain Names in bad faith.

As a result, the Complainant has satisfied its burden of proving that the Respondent registered and used the Disputed Domain Names in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <etvnetlive.com> and <etvnetplus.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Dated: January 24, 2011

¹ Even though it is unclear when the Complainant has started to use the website “www.etvnet.com” (the Respondent claims that the relevant domain name was acquired in 2009), it is established that such use started before the Disputed Domain Names were registered and used by the Respondent.