WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baruti Investments Ltd v. DPStream
Case No. DCC2015-0001
1. The Parties
1.1 The Complainant is Baruti Investments Ltd of Belize City, Belize, represented by Avraam Petros, Belize.
1.2 The Respondent is DPStream of Morocco.
2. The Domain Name and Registrar
2.1 The disputed domain name <dpstream.tv> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2015. At that time the Complaint related to four different domain names comprising the term "dpstream" combined with a Top-Level Domain ("TLD") (<dpstream.cc>, <dpstream.co> and <dpstream.me> in addition to the Domain Name). In the Complaint the Complainant contended that the Respondent was "unknown" and provided material which suggested that at least two of those domain names were registered in the name of "SUPER PRIVACY SERVICE C/O DYNADOT".
3.2 On January 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 2015 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information identifying the registrant to be "Super Privacy Service c/o Dynadot" in the case of two of the disputed domain names and "DPStream" and "allostreaming" in the case of the remaining two disputed domain names.
3.3 On January 9, 2015 the Center sent an email to the Complainant 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 amendment to the Complaint on February 10, 2015 limiting its Complaint to the Domain Name. The Complainant filed a second amendment to the Complaint on February 12, 2015 identifying "DPStream" as the Respondent for the purposes of this proceeding.
3.4 The Center verified that the Complaint together with the amendments to 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").
3.5 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 11, 2015.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 19, 2015. 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
4.1 The Complainant operates a website from the domain name <dpstream.net>. That website frames, streams and shares links to videos elsewhere on the Internet. It registered the domain name <dpstream.net> on August 28, 2009 and claims to have about ten million users of its website a month.
4.2 It would appear from a screenshot provided with the Complaint that the Complainant's service is primary directed to French speakers.
4.3 The Complainant is the owner of a number of trade marks that comprise or incorporate the term "dpstream". They include:
(i) French registered trade mark no. 4104108 with an application date of June 26, 2014 in classes 9, 38 and 41;
(ii) Community trade mark no. 013593991 for DPSTREAM as a word mark with an application date of December 19, 2014 in classes 9, 38 and 41.
4.4 The Domain Name was registered on September 29, 2010 at the same time as the other three domain names that originally formed part of the Complaint. The Domain Name has been used in connection with a website that provides a similar service to that of the Complainant and may also allow the downloading of video content. A screenshot of the website operating from the Domain Name prior to the start of this proceeding shows that the website is also primary directed to French speakers.
4.5 On December 20, 2014 the Complainant's legal counsel sent an email to the Respondent claiming that the Domain Name and its activities infringed its trade mark rights and was contrary to the UDRP. The Respondent did not respond to that email. However, the Complainant also made contact with the Respondent through an escrow agent in or about January 2015. During the email discussions that then took place the Respondent offered to sell the Domain Name to the Complainant for USD 10,000.
4.6 As at the date of this decision the Domain Name now diverts Internet users to a similar website operating from the domain name <bbstreaming.com>.
5. Parties' Contentions
5.1 The Complainant refers to its website and claims that it offers a streaming service that operates lawfully. It contends in contrast that the website operating from the Domain Name does not operate lawfully. It contends that the Domain Name and the website is being operated in such a way as to lead users to confusion between the website and that of the Complainant.
5.2 The Complainant further claims that at the time the Domain Name was registered the Complainant's service was already well known in France and elsewhere. It claims that the Respondent's activities do not provide the Respondent with any right or legitimate interest in the Domain Name. Further, it contends that the Domain Name has been registered and is being used in bad faith. In this respect it claims that the use made of the Domain Name shows that the Domain Name has been registered and used with the intention of attempting to attract for commercial gain, Internet users to the Respondent's website, by creating a confusion with the Complainant's trade mark. The commercial gain alleged would appear to come from advertising appearing on the website operating from the Domain Name.
5.3 The Complainant also contends that the Respondent's offer to sell the Domain Name for USD 10,000 evidences bad faith.
5.4 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Complainant is the owner of at least one word mark for DPSTREAM and the Domain Name comprises that term with the addition of the ".tv" TLD. The Domain Name is, therefore, at least confusingly similar to a trade mark in which the Complainant has rights. The test here involves a comparison between the relevant domain name and the relevant trade mark. As such, how the Domain Name is actually being used by the Respondent is not relevant (subject, perhaps in borderline cases to the minor qualification set out by this Panel in RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 For reasons that are discussed in greater detail under the heading "Registered and Used in Bad Faith" below, the Complainant has persuaded the Panel that the Domain Name was registered and has been used with the intention of imitating the Complainant's activities and website and in particular had adopted the term "dpstream" as part of its name and Domain Name to take advantage of the associations of that term with the Complainant's business and mark. Such use does not involve a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. This is so regardless of the question of to what extent the Respondent's activities are or are not lawful (as to which the Panel makes no finding). Accordingly, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.6 Although the Complainant brings forward no evidence in support of its claims that DPSTREAM was well known at least in France as the name of the Complainant's service at the time that the Domain Name was registered, the Panel accepts that it is more likely than not that the Domain Name was registered with the Complainant's use of that term in mind. In this respect, there is the Complainant's undisputed assertion that it had been conducting its activities since the registration of its domain name <dpstream.net> on August 28, 2009, which is over a year prior to the registration of the Domain Name. Further, the evidence of more recent use of the Domain Name does reveal a website the look and feel of which is similar to that of the Complainant. Both websites are also in French. Although the registration of the Domain Name was nearly four and a half years ago, there is nothing to suggest that the evidence of the website operating from the Domain Name is in some way atypical of the way in which the Domain Name has been used since registration.
6.7 The Respondent's use of the Domain Name commenced almost four years before the Complainant had obtained any registered trade mark for DPSTREAM. Further, the Complainant has not claimed that as at the time of the registration of the Domain Name it had developed some form of unregistered trade mark rights in that term. However, in this case that does not matter. As paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") records:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)"
6.8 Further, at paragraph 6.11 of the decision in Marden Group B.V. v. Tucows.com.co, WIPO Case No. D2011-1061 the panel stated as follows:
"There are cases that suggest that what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trade mark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use (see for example St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 and the cases cited in paragraph 3.1 of the WIPO Overview 2.0). On this approach although the proposition to be found in paragraph 3.1 of the WIPO Overview 2.0 is 'generally speaking' correct, this is not so much because 'the registrant could not have contemplated the complainant's then non-existent right" but because in the absence of such rights or trade mark use, it is likely to be very difficult to show that the registration was with the complainant's trade mark use of that term in mind.'"
6.9 In the present case the Panel concludes that at the time of the registration of the Domain Name, the term DPSTREAM was (a) being used in a trade mark sense by the Complainant and (b) that the Domain Name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use. In particular, the Respondent intended to use and has used the Domain Name in a manner that falls within the scope of paragraph 4(b)(iv) of the Policy.
6.10 These findings are sufficient for the Panel to conclude that the Domain Name has been registered and is being used in bad faith. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <dpstream.tv>, be transferred to the Complainant.
Matthew S. Harris
Date: March 20, 2015