WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euronews SA v. PrivacyProtect.org, Blyesky Investments ltd
Case No. D2011-1424
1. The Parties
The Complainant is Euronews SA, of Écully, France, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is PrivacyProtect.org of Queensland, Australia and Blyesky Investments ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom (herein after the “Respondents”).
2. The Domain Name and Registrar
The disputed domain name <euronews.com> is registered with Answerable.com (I) Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details disclosing registrant and contact information for the disputed domain name confirming the named Respondents and contact information in the Complaint.
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 Respondents of the Complaint, and the proceedings commenced on August 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 21, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on October 13, 2011. 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 is Euronews, one of the world's most widely broadcasted and largest international news channels.
Since its creation in 1992, the Complainant has constantly grown and acquired goodwill and notoriety worldwide in the term EURONEWS which corresponds to its company name, its brand, logo and trade marks.
Furthermore, the Complainant's Euronews website attracts very substantial traffic. For instance, the Complainant's Euronews website attracted 3.8 million Internet users during May 2011 and 538,000 Internet users on May 2, 2011. The United States of America (“USA”) is the first country of residence of Internet users visiting the Complainant's Euronews website, followed by France, Russia, Germany, Italy, the United Kingdom of Great Britain and Northern Ireland (“UK”) and Ukraine.
The Complainant is the registrant of many domain names consisting of the term EURONEWS, including the domain names:
- <euronews.tw>; and
The Complainant has also secured ownership of numerous trade mark rights in the term EURONEWS, in many jurisdictions and as early as in 1989, including, for instance, in the USA, Germany, the UK, France, the Netherlands, Switzerland, Russia, Turkey, Ukraine, Morocco, Australia, Canada and China. For instance, the Complainant owns the following trade mark registrations:
- International Trade Mark EURONEWS No. 534139, registered on January 23, 1989;
- International Trade Mark EURONEWS No. 688672, registered on November 6, 1997;
- International Trade Mark EURONEWS No. 767011, registered on July 17, 2001;
- US Trade Mark EURONEWS No. 2758033, registered on September 2, 2003 with priority date of January 18, 2001; and
- Canadian Trade Mark EURONEWS No. TMA675652, registered on October 26, 2006
The overwhelming majority of search results obtained by typing the term EURONEWS in a Google search engine available at the URL “www.google.com” refers to the Complainant.
5. Parties’ Contentions
The Complainant informs that on January 20, 2011 and on July 7, 2011, when the URL “www.euronews.com” was typed into an Internet browser, it pointed to a website displaying very ostentatiously at the centre of its home page “WATCH LIVE WORLDNEWS NOW” with the very distinctive BBC News logo and home page. This website purports to allow users to surf the Internet anonymously and to be able to download movies and music anonymously without being located.
In light of this, given the blatantly abusive nature of the use made by the Respondents of the disputed domain name, it became evident to the Complainant that the Respondents had registered the disputed domain name solely to seek to trade off the Complainant's significant goodwill in the term EURONEWS by misleading users.
The Complainant argues that the disputed domain name registered by the Respondents is identical to the Complainant’s EURONEWS trade marks, brand and company name as it totally reproduces the Complainant’s distinctive and globally renowned trade mark EURONEWS.
The Complainant asserts that it is well established under the Policy that the addition of the “.com” top level domain is immaterial when considering the issue of confusing similarity between a complainant's trade mark and a domain name.
The Complainant asserts that by registering the disputed domain name which reproduces the Complainant’s exact trade mark EURONEWS, the Respondents have undoubtedly created confusing similarity with the Complainant's trade mark.
Therefore, the Complainant argues that the disputed domain name is identical to the Complainant's EURONEWS trade marks.
The Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain name.
The Complainant informs that there is no suggestion that the Respondents could possibly invoke any of the circumstances listed in Paragraph 4(c) of the Policy which sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
The Complainant also informs that the Respondents are not commonly known by the term EURONEWS and have not secured or even sought to secure any trade mark rights in the term EURONEWS.
The Complainant alleges that the Respondents have not made and are not currently making any legitimate commercial or fair use of the disputed domain name.
The Complainant argues that the Respondents use the disputed domain name to point to a website which does not provide any credible indication as to how the identical reproduction of the term EURONEWS could conceivably be justified other than seeking to unduly gain benefit from the significant international goodwill established by the Complainant as well as disrupting the Complainant's business.
The Complainant asserts that the Respondents are not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its distinctive and renowned EURONEWS trade mark. Yet the disputed domain name registered by the Respondents reproduces the exact EURONEWS trade mark.
The Complainant also asserts that the search carried out on the Wayback Machine database available at “www.archive.org” does not indicate that the disputed domain name has ever been used in connection with a bona fide offering of goods or services since it was registered by the Respondents.
The Complainant argues that the use of the disputed domain name by the Respondents creates "initial interest confusion" whereby the Respondents reproduce the exact trade mark of the Complainant in order to bait Internet users looking for the Complainant’s international news channel to the Respondents' website where Internet users will be encouraged to switch their interest to the Complainant's main competitor, BBC News, and to subscribe to and pay for the Respondents' services. The Complainant alleges that this sort of use of the disputed domain name and of the Complainant's trade mark cannot be considered to be fair or legitimate.
The Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the EURONEWS trade mark is distinctive and renowned internationally and has been continuously used for more than twenty years, and there is no evidence of any actual or contemplated good faith use of the disputed domain name by the Respondents.
The Complainant argues that it is inconceivable, in view of the significant visibility and goodwill of the Complainant worldwide, that the Respondents did not have the Complainant and its EURONEWS trade mark, name and international news channel in mind when registering the disputed domain name in their name at a time when the Complainant already had very substantial goodwill and reputation across the world.
The Complainant also argues that in view of the international presence and reputation of the EURONEWS news channel and trade mark, it is apparent that the Respondents’ intention in registering the disputed domain name was to misappropriate the benefit of the reputation that the Complainant has established.
The Complainant alleges that the Respondents were trying to intentionally attract Internet users to visit their website with the intention of fraudulently benefiting from public confusion by deriving some financial gain. Such practice is clearly contrary to paragraph 4(b)(iv) of the Policy as well as detrimental to the Complainant's reputation, interests and legitimate commercial activities, especially when one considers that the disputed domain name is used, inter alia, to promote and refer to one of the Complainant's main competitors.
The Complainant contends that the fact that the website to which the disputed domain name points clearly offers a service targeted at Internet users wanting to download copyrighted material anonymously and thus facilitating and promoting the violation of copyright laws in many jurisdictions including France and the UK, is a further and very serious element establishing the Respondents' bad faith.
The Complainant also alleges that the promotion of illegal and unauthorized downloading of copyrighted work is highly objectionable, to say the least, and the fact of attracting Internet users to a website promoting such activities by creating a likelihood of confusion with the Complainant's legitimate activities is a strong indication of bad faith use of the disputed domain name as well as a serious cause of harm to the Complainant's image and business.
Finally, the Complainant argues that although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitutes a factor indicating bad faith. Given the Respondents' profile and the factual background set out in this Complaint, there is little doubt that the use of privacy services for the registration of the disputed domain name is part of an overall strategy to make the enforcement of third party rights more difficult.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s EURONEWS trademark. Under the Policy the addition of the “.com” top level domain is immaterial when considering the issue of confusing similarity between a complainant's trade mark and a domain name.
The Panel, therefore, finds that the Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondents have no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s EURONEWS trade mark.
The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of proof shifts to the Respondents to show that they do have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondents, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondents have ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondents have not made and are not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the Complaint was filed, the disputed domain name was associated with a website that purport to allow users to surf the Internet anonymously and to be able to download movies and music anonymously without being located. The panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that the Complainant has established the second condition of the paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
The Respondents have intentionally registered the domain name at issue which totally reproduces Complainant’s notoriety trade mark EURONEWS. By the time the disputed domain name was registered, it is unlikely that the Respondents did not have knowledge of the Complainant’s rights on the trade mark EURONEWS.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its EURONEWS registered trade mark when the disputed domain name was registered. The Panel finds that the Respondents must have been aware of the Complainant’s rights in the mark and, further, that the Respondents knowingly infringed the Complainant’s trade mark when it registered the disputed domain name.
Also, under the Policy, paragraph 4(b)(iv), it is evidence of bad faith that: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”. This is evidence of the intention by the Respondents to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
In light of these, the Panel finds the Respondents registered and used the disputed domain name in bad faith. The Complainant has established the third element of the Paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <euronews.com> be transferred to the Complainant.
Dated: October 26, 2011