WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iroko Partners Limited v. Iroko TV Movies
Case No. D2012-0829
1. The Parties
The Complainant is Iroko Partners Limited of Leeds, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Sideman & Bancroft LLP, United States of America (“U.S.”).
The Respondent is Iroko TV Movies of Accra, Ghana.
2. The Domain Name and Registrar
The disputed domain name <irokotvmovies.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2012, the Registrar transmitted by email to the Center its verification response confirming:
(a) the disputed domain name is registered with it;
(b) the Respondent is the registrant of the disputed domain name and providing the Respondent’s contact details;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration of the disputed domain name; and
(d) English is the language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 18, 2012. 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 claims to be the world’s largest distributor of Nigerian entertainment. It claims to be YouTube LLC’s largest African partner. It also claims to have the exclusive digital and Internet distribution rights for an extensive number of works. From the Complainant’s website, these “works” appear to be motion pictures and television programs, particularly about Nigeria or Ghana.
One of the Complainant’s main distribution channels is the website located at “www.irokotv.com”. That domain name was registered in September 2011 and the website itself launched in November 2011. On that website, the Complainant promotes itself as “iRokotv – Home of Nollywood and Ghanian movies”.
The Complainant provides details of a number of pending and approved trademark applications in Nigeria, the U.S. and for a CTM. None of these appear to be registered.
The Registrar has confirmed that the Respondent registered the disputed domain name on February 9, 2012.
Shortly before the Complaint was filed, the disputed domain name resolved to a website which distributed a range of motion pictures and other video content. This included, amongst other things, Nigerian films over which the Complainant claims exclusive rights.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic co-ordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant does not appear to have any registered trademarks. Insofar as registered rights are concerned, it claims only pending or approved applications. The Panel notes that the Trade Marks Act Chapter 436, 1990, of Nigeria contemplates applications being examined and accepted. Once accepted, they may be opposed and become registered only if no opposition is lodged during the opposition period or, if an opposition has been lodged, it is unsuccessful.
The usual rule under the Policy is that pending, even accepted, applications do not qualify as trademark rights for the purposes of the Policy: e.g., Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994. The Complainant does not provide any information to support the application of any of the exceptions to that rule which some panels have been prepared to recognise.
The Complainant also claims common law rights in the U.S. arising from use. Apart from the evidence of its website at “www.irokotv.com”, the Complainant does not provide evidence about the extent or volume of its use, its revenues under or by reference to the mark or the other usual indicia for establishing a common law reputation in an unregistered trademark: See e.g., the decisions cited in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
As the Complainant points out, however, the term “irokotv” is not descriptive of motion pictures or television programs. In addition, it appears on the record in this case that the Complainant has adopted and commenced using that term several months before the Respondent registered the disputed domain name. Further, as discussed below, it appears likely that the Respondent adopted the disputed domain name with knowledge of the Complainant’s activities under “irokotv”. These factors taken together would be sufficient to give rise to a protectable interest at common law in “irokotv”: See e.g., Cox & Kings India Limited v. Rakesh Sud, WIPO Case No. D2000-0411 and Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011-0200.
The second part of the inquiry is that the disputed domain name must be shown to be confusingly similar to the term “irokotv”.
On this part of the inquiry what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
On this question, the addition of the gTLD “.com” to the disputed domain name can be disregarded as simply a functional requirement of the domain name system.
The other difference between the Complainant’s term and the disputed domain name is the addition to the latter of the word “movies”. As the Complainant contends, the addition of this descriptive term does not dispel any potential for confusion. Although it did not concern the use of the term “movies”, the reasoning in Wal-Mart Stores, Inc. v. Anthony Hardy, WIPO Case No. D2007-0255 is applicable here as the disputed domain name combines the Complainant’s claimed mark with the class of goods for which it is known.
Accordingly, the Complainant has established this first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(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 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of WIPO Overview 2.0.
As the Respondent was making a commercial use of the disputed domain name before the Complaint was filed, paragraph 4(c)(iii) does not apply.
The Complainant contends that it has not authorized the Respondent to use the term “irokotv” and the Respondent is not associated with the Complainant or its services in any way. Subject to the point about derivation of the disputed domain name from the Respondent’s name discussed below, the use of a confusingly similar domain name to the term “irokotv” in the same markets as the Complainant and in competition with the Complainant’s own activities under that name is not a bona fide offering of goods or services under the Policy.
The disputed domain name is the same (apart from the gTLD, “.com”) as the name the Respondent has used to register the disputed domain name under. The Complainant contends, however, that this is not the Respondent’s real name and it has been adopted solely to facilitate the Respondent’s alleged plan to divert business from the Complainant by use of a confusingly similar domain name.
The basis for this contention is that the Complainant has been engaged in disputes with Devace Integrated LLC (Devace), as evidenced by takedown notices and counter-notices under the Digital Milennium Copyright Act (DMCA) included in Annexes 10, 11 and 12 to the Complaint. Devace is, or is associated with, Iroko TV Movies LLC, which gives as its address the same address as the Respondent. Both Devace and Iroko TV Movies LLC purport to be represented by one P. Akolisa, attorney at law, who, amongst other things, filed a counter-notice under the DMCA on behalf of Iroko TV Movies LLC in response to a notice issued by the Complainant against Devace. The Complainant’s inquiries, however, disclose that some of the addresses used by Mr. Akolisa do not exist or that Mr. Akolisa is not known at the address. In addition, according to the Complaint, Mr. Akolisa is not registered as an attorney at law with the State Bar associations in either of the American states in which he has claimed to be practicing.
Although the Complaint has been served on the Respondent at the address confirmed to be current and correct by the Registrar, the Respondent has not filed a rebuttal of, or otherwise sought to dispute, these allegations. It would have been quite straightforward, for example, for the Respondent to have provided evidence of its incorporation or other trading status pre-dating the launch of the Complainant’s services if it had been in existence, or known by that name, before that date.
Having regard to these matters and the apparent adoption (on the record in this case) of the name Iroko TV Movies by the Respondent after the Complainant commenced using it to provide video entertainment from both Nigeria and Ghana (where the Respondent is apparently based), the Panel finds that the Complainant has raised a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that case.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case:
(a) the Respondent appears to have adopted the disputed domain name after the Complainant commenced offering its commercial services by reference to the term “irokotv”;
(b) the Respondent appears to have done so from Ghana which is closely connected with the subject matter of the Complainant’s website; and
(c) the term “irokotv” is not descriptive of the services either the Complainant or the Respondent are offering and it does not appear to be derived from the nature of those services.
Accordingly, the Panel draws the inference on the record in this case that the Respondent did register the disputed domain name with knowledge of the Complainant’s term “irokotv” and with the intention of taking advantage of the Complainant’s rights in that term. In addition, by using the disputed domain name in connection with an unauthorized service which competes directly with the Complainant’s own “irokotv” service, the Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has also established the third requirement under 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 disputed domain name, <irokotvmovies.com>, be transferred to the Complainant.
Warwick A. Rothnie
Dated: June 1, 2012