WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sky International AG, Sky Plc, Sky Radio B.V. v. Hakan Aktin, Skyradyo

Case No. D2016-0304

1. The Parties

The Complainant is Sky International AG of Zurich, Switzerland, Sky Plc of Middlesex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), SKY Radio B.V. of Amsterdam, the Netherlands, represented by NSN Law Firm, Turkey.

The Respondent is Hakan Aktin, Skyradyo of Izmir, Turkey, self-represented.

2. The Domain Names and Registrars

The disputed domain name <skyradyo.biz> is registered with FBS Inc. The disputed domain name <skyradyo.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (collectively the “Registrars”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2016. On February 15, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 16, 2016, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 17, 2016, the Registrar FBS Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and stating that Turkish was the language of the Registration Agreement for the disputed domain name <skyradyo.biz>. The Center sent an email communication to the Parties on February 22, 2016, requesting that the Complainant provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or, submit the Complaint translated into Turkish; or, submit a request for English to be the language of the administrative proceeding. The Respondent was also invited to make submissions in this regard. On February 24, 2016, the Complainant made a request that English be the language of the administrative proceeding. The Respondent did not reply to that request.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. The Center received email communications from the Respondent on March 1, 2016, March 2, 2016, March 4, 2016, March 7, 2016, and March 11, 2016.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 23, 2016. 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

There are three related companies initiating these administrative proceedings. Sky International AG is the registered owner of most brands and intellectual property rights of the Sky Group, whereas Sky Plc. is the registered owner of relevant Turkish trademarks of the Sky Group. Sky Radio B.V. is the exclusive licensee of the Sky Group for radio broadcasting services in Germany, the Netherlands and Belgium. All of them are hereinafter jointly accepted and referred to as “the Complainant”, unless otherwise indicated.

The Complainant is a well-known digital television platform and a provider of audio visual content, including news, movies, entertainment and sports.

The Complainant and its affiliates own a large number of SKY trademark registrations around the world, including in Turkey. Among this large number of trademark registrations, it is the Panel’s view that one of the probably most relevant for these administrative proceedings is the Turkish word mark SKY (TPE no. 2005-55385), which was registered on July 15, 2008. This trademark registration inter alia explicitly claims protection for any kinds of radio broadcasting and related services.

The Complainant and its affiliates also own a number of domain names which incorporate the SKY trademark, such as <sky.com>, but also <skyradio.com>, <skyradio.net>, and <skyradio.nl>.

The Respondent is the operator of a Turkish digital radio station, which is online available under the disputed domain names.

The disputed domain name <skyradyo.net> was created on July 10, 2010.

The disputed domain name <skyradyo.biz> was created on May 28, 2012.

Screenshots have been provided by the Complainant showing that the disputed domain names were used for offering digital radio services in the Turkish language. The provided screenshots show that the Respondent has used a logo which is almost identical to the official SKY radio logo of Sky Radio B.V., which is one of the Complainants. Furthermore, the provided screenshots provide a small disclaimer used by the Respondent stating that it is not related to the Complainant and its affiliates.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its SKY trademarks.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is rather argued that the disputed domain names falsely suggest that there is some official or authorized link with the Complainant in Turkey.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly argues that the Respondent was aware of the Complainant’s SKY trademarks, when registering the disputed domain names in 2010, respectively in 2012. Concerning bad faith use, the Complainant argues that the Respondent has intentionally used an almost identical version of the Complainant’s official SKY Radio logo. In view of the Complainant, this indicates that the Respondent acted fully aware of the Complainant’s rights and mainly tries to illegitimately benefit from the Complainant’s worldwide reputation.

B. Respondent

The Respondent requests the denial of the Complaint.

Among others, the main arguments are as follows:

In a first response, the Respondent argued that it was not aware of any third party rights concerning the use of the official SKY radio logo. Later, however, the Respondent argued that a user must have uploaded the logo without the Respondent’s knowledge, probably as an act of “sabotage”.

Further, the Respondent argues that the disputed domain names are not identical to the Complainant’s SKY trademarks as they incorporate the Turkish term “radyo”.

In its further statements, the Respondent alleges that they have a low income and are operating the Internet radio services under the disputed domain names without the intent of gaining commercial profits as a platform only.

Finally, it is argued that it is not fair to claim the transfer of domain names after more than four years since their registration. The Respondent believes that in case of a transfer, all investments made so far would become worthless.

6. Discussion and Findings

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where appropriate, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Language of the Proceedings

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language for one of the disputed domain names, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a costly and time consuming Turkish translation of the Complaint, while the Respondent failed to raise objections to the Center’s communication with regard to the language of the proceedings, although communicated in Turkish and English. The Panel believes that the Respondent will not be prejudiced by a decision being rendered in the English language, particularly as the Respondent is apparently able to read and understand the English language while remaining permitted to provide its submissions in Turkish, what he actually did.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the word mark SKY by virtue of a number of trademark registrations, including a trademark registration in Turkey explicitly covering protection for radio broadcasting (cf., TPE no. 2005-55385 of July 15, 2008).

The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark SKY, as they fully incorporate the Complainant’s trademark. The mere addition of the generic Turkish term “radyo”, which means “radio” in the English language, does not serve to distinguish the disputed domain names from the Complainant’s registered SKY trademarks.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

While the burden of proof on this element remains with the complainant, panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file sufficient evidence or make convincing arguments to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark SKY as the distinctive part of the disputed domain names.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names.

Particularly, the Panel is convinced that the Respondent is not making a bona fide offering of goods and services or legitimate noncommercial or fair use of the disputed domain names without the intent to misleadingly divert Internet users or to tarnish the SKY trademark of the Complainant. Quite the contrary, the Panel believes that the Respondent intentionally tries to illegitimately benefit from the Complainant’s fame and reputation. The use of the Complainant’s official logo on the Respondent’s website linked to the disputed domain names is assessed by the Panel as a strong indication in this regard. The Respondent’s defence argument that the use of the official SKY radio logo happened accidentally or as part of an act of sabotage is in view of the Panel only a self-serving allegation.

Furthermore, the Respondent’s allegation that it must be unfair to claim rights in the disputed domain names after years of investment by the Respondent is not convincing. First, there is no indication in the case file that would allow accepting a forfeiture of rights by the Complainant in the present case. Second, it is commonly accepted that anyone who starts to run a business or service has to carry out a legal due diligence in advance about possibly prevailing rights by third parties. At least according to the small disclaimer used by the Respondent on the website linked to the disputed domain names, it is obvious that the Respondent was aware about the existence of the Complainant and its trademarks right from the start. The Respondent nevertheless decided to take the risk of a legal dispute and started to invest in its project of providing radio broadcasting services by using the Complainant’s trademark SKY. By doing so, the Respondent can in view of the Panel not claim any legitimate right or protection with regard to its investments connected with the operation of its radio services under the disputed domain names.

All in all, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and used the disputed domain names in bad faith.

The Panel is well aware of the reputation and recognition of the Complainant’s trademark SKY. The Panel believes that the Respondent must have known the SKY trademark when registering the disputed domain names. This is in particular likely as the disputed domain names have been registered well after the Complainant’s SKY trademark registration in Turkey. Furthermore, the use of the official SKY radio logo and the disclaimer by the Respondent as seen on the provided screenshots by the Complainant strongly indicate that the Respondent was fully aware of the Complainant and its SKY trademark rights when registering and using the disputed domain names.

It rather appears that the Respondent has registered the disputed domain names mainly for the purpose of creating an association with the Complainant, in particular with its official radio broadcasting services. After having reviewed the already mentioned screenshots in the case file, the Panel is convinced that the Respondent has intentionally registered the disputed domain names to offer radio broadcasting services by using the term “sky” in order to create an impression that it is an official Turkish version of SKY radio broadcasting or at least operated with the authorisation of the Complainant. Not only the disputed domain names but also the use of the official SKY radio logo give the impression that the Respondent has intended to mislead Internet users who may search for an official SKY radio broadcasting service in Turkey.

Taking all facts and legal arguments into account, the Panel concludes that the disputed domain names were registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <skyradyo.biz> and <skyradyo.net> be transferred to the Complainant, SKY International AG.

Kaya Köklü
Sole Panelist
Date: April 4, 2016