Complainant is Endemol South Africa (Proprietary) Limited on behalf of Endemol Netherlands B.V. of Johannesburg, South Africa, represented by Phukubje Pierce Masithela Attorneys, South Africa.
Respondent is PrivacyProtect.org, Domain Admin of Nobby Beach, Queensland, Australia / Bin Jiang, Da Tang co. ltd. of Hebei, Tianjin, China, self-represented.
The disputed domain name <bigbrotherafrica.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013. On January 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 11, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 15, 2013.
On January 5, 2013, Respondent sent a pre-commencement email to the Center.
The Center verified that the Complaint together with the amendment 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Response was filed with the Center on February 2, 2013.
The Center appointed Ross Carson as the sole panelist in this matter on February 18, 2013. 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.
Complainant is a corporation incorporated in South Africa in 1996 by Endemol International BV (“EI”). EI is one of the largest independent television and digital production company in the world. It comprises a global network of more than 80 companies in 31 countries including the United States of America (“USA”), the United Kingdom of Great Britain and Northern Ireland (“UK”), Spain, Italy, France, Germany and the Netherlands, as well as Latin America, India, South Africa and Australia. Endemol works with approximately 300 broadcasters, digital platforms and licensees worldwide and covers all elements of the entertainment spectrum including development, production, marketing, distribution and franchise management. The company annually produces 10,000 hours of content across genres, including entertainment, reality TV, game shows, comedy, drama, sport, docu-dramas, animation, features and feature films. Its credits include international hits such as Big Brother, Deal or No Deal, 1 vs. 100, Wipeout and The Money Drop.
Among its activities EI creates and develops original television programs. The bundle of intellectual property rights associated with an original program is referred to as “Formats”. Formats are generally defined as “the overall concept, premise and branding of a copyrighted television program”. One of the Formats created and developed by EI is the Big Brother Format. The Big Brother Format is described as follows: “Twelve people who have never met before, are suddenly catapulted into the Big Brother house where they must share every minute of the next 100 days. In their fenced off compound, they’re denied any contact with the outside world - no phones or papers, no radio or television, and strictly no contact with their loved ones. They’re all alone... except for the millions watching and judging their every move. Everything they do is broadcast. They can’t eat, sleep or fart without the nation clocking every action. ...Yet they’re desperate to stay in there... Somehow all the pain and embarrassment is worth the prospect of landing the title of Big Brother winner and a huge money prize. All the pain of knowing that any moment your housemates could be trying to kick you out! On a regular basis, the housemates must nominate two or more of their fellow participants for eviction, but viewers ultimately decide who has to leave. When only one remains... he or she is the winner of Big Brother.”
Television series based on the Big Brother Format are produced in Albania, Argentina, Australia, Belgium, Brazil, Bulgaria, Canada, Chile, Colombia, Croatia, Czech Republic, Denmark, Ecuador, Finland, France, Germany, Greece, Hungary, India, Indonesia, Israel, Italy, Malta, Mexico, the Netherlands, Niger, Nigeria, Norway, Peru, Philippines, Poland, Portugal, Romania, Russian Federation, Serbia, Slovakia, Slovenia, South Africa, Spain, Sweden, Switzerland, Thailand, Ukraine, UK and the USA among others.
Much of the intellectual property rights related to the Formats including the Big Brother Format became housed in a related group company known as Endemol Netherlands B.V. One of the Formats licensed by Endemol Netherlands B.V. to Complainant was and still is the Big Brother Format. Complainant was licensed by EI to market, produce and allow for the broadcast of television programs in Africa. Pursuant to Complainant’s license with EI Complainant is obliged to assist EI and therefore Endemol Netherlands B.V., to protect its Format rights and the intellectual property rights attached to it. A confirmatory letter authorizing Complainant to pursue this Complaint was attached as an annex to the Complaint.
Endemol Nederland B.V. is the registered owner of the trademark BIG BROTHER registered in classes 9 and 41 in over thirty countries throughout the world. The registration includes goods and services associated with elements of the entertainment spectrum including development, production, marketing, distribution and franchise management relevant to the Big Brother Format. Complainant is a licensee of the BIG BROTHER trademarks for use in marketing, producing, and allowing for the broadcast of Big Brother television programs in Africa. The trademark BIG BROTHER was first registered in the Benelux region under trademark application number 937276 on April 28, 1999. The trademark BIG BROTHER was first registered in South Africa between April 28, 1999 and October 28, 1999 in classes 9 (reg. no. 1999/19969), 16 (reg. no. 1999/19970), 25 (reg. no. 1999/19971), 28 (reg. no. 1999/19972) and 41 (reg. no. 1999/19973). The trademark BIG BROTHER was first registered in China on January 29, 2004 and in Nigeria on May 4, 2006. Complainant’s license is limited to Africa.
In terms of deal memoranda between EI and Complainant, Complainant was afforded further rights in respect of producing a series for the pan-African market known as “Big Brother Africa”. The first such deal memorandum was concluded in 2003 and entailed the series being produced for Electronic Media Network Ltd (“M-Net”) which broadcasts on MultiChoice (Pty) Ltd’s (“MultiChoice”) DSTV commercial satellite broadcasting bouquet.
The disputed domain name <bigbrotherafrica.com> was first registered by MultiChoice in 2003 and shortly thereafter transferred to Complainant. Due to an oversight on Complainant’s part, the disputed domain name registration expired in early 2006 when it was not renewed on time. The WhoIs information for the disputed domain name currently shows a registration date of April 5, 2006 and shows Respondent as registrant contact. From archived screen shots of webpages from the website associated with the disputed domain name, it is evident that an advertising page was used with the disputed domain name in 2006; an advertising page associated with a domain seller appeared on the website in 2007; a further advertising page appeared on the website on May 12, 2008 and a webpage associated with Respondent is shown on a webpage dated July 6, 2008.
Complainant and/or one of the related companies are the owners of approximately 30 domain names, set forth in an annex to the Complaint, in which “big brother” is the distinctive portion of the disputed domain name.
Complainant states by way of background that on August 18, 2008 Complainant, or its representatives on its behalf, sent a “cease-and-desist” letter by email to Respondent at the address listed in the WhoIs for the disputed domain name. Complainant advised Respondent that the unauthorized use of the BIG BROTHER trademark within the disputed domain name <bigbrotherafrica.com> violated the rights in the said trademark owned by Complainant. In the interests of an amicable settlement, the letter sought to resolve the dispute by non-adversarial means and made an offer of USD 5,000 for the disputed domain name. Respondent did not respond to this letter. Two reminders were sent out after the first letter, on August 27, 2008 and on September 4, 2008. Complainant did not receive a reply to either of these letters. Complainant then filed a complaint with the Center, on or about October 13, 2010, under WIPO Case No. D2010-1727 (“the original complaint”). Respondent then filed a reply to the original complaint. In an effort to avoid prolixity and an extremely large document, Complainant has not attached to this Complaint the original complaint and Respondent’s original reply. Complainant has no objection to the Panel viewing the original complaint and Respondent’s original reply as it may appear in the Center’s records, for purposes of establishing the history of the matter and accordingly pray that both the original complaint and Respondent’s original reply be regarded as having been incorporated herein.
Complainant withdrew the original complaint on January 5, 2011, without prejudice to its right to file a subsequent complaint. Complainant withdrew the original complaint with a view to establishing the veracity of the claims made by Respondent and conducting enquiries with both Endemol South Africa and third parties in South Africa.
The essence of Respondent’s defense to the original complaint was that Complainant had afforded it permission to operate as an official fan website. Respondent also alleged in the original response that Complainant continued to “endorse and use the website BigBrotherAfrica.com as a photo or the site and a live link appear on complainant own website”; and Respondent had operated “with the express permission of the complainant for several years and has relied on the statements and agreement with complainant in developing the site, at its own expense, to the site it is today. There is no confusion other than the misleading information provided by the Complainant. This is a civil contract dispute, and this panel lacks sufficient ground to hear this case”.
In making its contentions, Respondent claimed that it had received permission to operate as an official fan site, and that such permission had been obtained from Complainant. All evidence presented by Respondent, in its original response under WIPO Case No. D2010-1727, appears to relate to communications with a person named “Job Bakena”, who purportedly worked for M-Net which broadcasts Big Brother Africa on MultiChoice’s DSTV commercial satellite broadcasting bouquet.
Complainant states that neither Complainant nor M-Net had authority to grant a license or permission to Respondent to do anything which might impair the groups rights in the BIG BROTHER or BIG BROTHER AFRICA trademarks. By way of background, M-Net contracts with Endemol South Africa, for Endemol South Africa to produce the Big Brother Africa series. The 2012 production agreement (and all prior productions agreements) concluded between M-Net and Endemol South Africa grants M-Net limited rights regarding the Big Brother Africa series. Such right in no way includes the right to give away any of Endemol South Africa’s or Endemol Netherland’s intellectual property. The 2012 production agreement (with prior production agreements having similar clauses) also expressly states that M-Net shall not “do or permit to be done anything which may impair EI’s [Endemol International /Endemol Netherlands] copyright, trade names, trademarks, domain names, service marks or any other right, title or interest in or to the Format and the name “Big Brother”.” M-Net’s confirmatory letter in this regard, attached as Annex 3.1 to the Complaint.
Respondent’s response to the original complaint, and should it be raised again to this Complaint, is flawed for a number of reasons. These are without admitting that being permitted to link to M-Net’s official Big Brother Africa webpage afforded it certain rights to Complainant’s trademark, if Respondent argues that in dealing with and obtaining permission from someone at M-Net, it obtained certain rights to Complainant’s trademark, it is submitted that Respondent is incorrect. It is universally accepted that a person who has no right to something, has no right to give that something away.
Respondent asserted in the original response that it had obtained permission from complainant. This is wholly incorrect. Respondent, prior to the original complaint, had no dealings whatsoever either with Endemol South Africa, Endemol International or Endemol Netherlands or any of their predecessors or affiliate companies. Respondent has therefore never had any licence, agreement or permission whatsoever from Endemol South Africa, Endemol International, Endemol Netherlands or any of their affiliates to use Complainant’s trademark. The implication that Complainant may somehow have acquiesced to Respondent’s use of the trademark accordingly holds no water.
Complainant asserts that Respondent had commenced use of the disputed domain name prior to having obtained the purported permission from M-Net and accordingly was by its own admission already using Complainant’s trademark, knowing that the trademark was owned by Complainant. In any event, as per Annex 3.1 to the Complaint, M-Net has confirmed that a person named Job Bakama was employed by a separate sub-contractor and not M-Net, and that Job Bakama had no authority to contract on either M-Net’s or Complainant’s behalf.
Given that Respondent has no legal basis to claim use of Complainant’s trademarks, has no legitimate rights in the trademarks or any other intellectual property and cannot rely on rights that may have been given to it by an entity that had no legal rights to do so, Respondent cannot claim that it has rights in the disputed domain name <bigbrotherafrica.com>.
Complainant states that it uses two trademarks, BIG BROTHER and BIG BROTHER AFRICA in association with its Big Brother Format in Africa. Complainant is the registered owner of trademark registrations for BIG BROTHER in South Africa and Nigeria, registered in relation to goods and services in classes 9 and 41 relating to the Big Brother Format. More detailed information relating to the above registrations and reference to registrations of BIG BROTHER in at least thirty other countries is found in Section 4 above.
Complainant further submits that it is the owner of common law rights in the trademark BIG BROTHER AFRICA in relation to the television program Big Brother Africa. The unregistered trademark BIG BROTHER AFRICA is associated with the series Big Brother Africa, which is broadcast to over 51 countries and territories via commercial satellite broadcaster MultiChoice’s DSTV service. The Big Brother Africa series has, apart from 2004, 2005 and 2006, been broadcast annually across Africa since 2003. Broadcasts resumed in 2007 and from season 4 (2009) onwards each season was given a subtitle with the subtitles being Big Brother Africa – Revolution (2009), Big Brother Africa All-Stars (2010), Big Brother Africa – Amplified (2011) and the current series Big Brother Africa – Stargame (2012). Complainant attached as annexes to the Complaint extracts from various websites, publications and research for the years 2003 to 2011 indicating substantial coverage of the Big Brother Africa television show and persons appearing on the Big Brother Africa television show across the African continent.
Complainant submits that while it may be argued that Complainant may not lay claim to the geographic descriptor “Africa”, it is submitted that the common law trademark BIG BROTHER AFRICA has attained a secondary meaning and is capable of being used as a trademark. In support of its contention that it has common law rights in the trademark BIG BROTHER AFRICA, Complainant states that it has broadcast the series since 2003 across 51 countries and territories across Africa. MultiChoice’s DSTV service has, without disclosing the actual amounts due to confidentiality, expended far in excess of USD 1 million over the course of the show’s 7 seasons while M-Net has spent far in excess of USD 200 thousand on marketing the most recent (2012) season of Big Brother Africa and marketing promotional videos from 2008 onwards. The official Big Brother Africa Facebook page has since it set up attracted approximately 47,381 members and approximately 853,000 “Likes”.
Complainant cites the decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 as support for its claim to common law trademark rights in BIG BROTHER AFRICA. In the Fairview case the panel found that, “Many previous panels operating under the Policy have found complainants to have common law trademark rights sufficient to satisfy the degree of trademark or service mark ownership required under paragraph 4(a)(i). ... To sustain such a finding, a complainant must demonstrate that its mark is either inherently distinctive (i.e., arbitrary, fanciful, or suggestive) or a descriptive mark that has achieved a “secondary meaning” (i.e., the descriptive term has taken on a second, trademark meaning). Over the course of many Policy decisions, a general consensus among panels has evolved with respect to evaluating the applicability of common law rights to a given mark. For descriptive marks, panels have considered factors such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition in determining whether secondary meaning exists”. Complainant also relies on the findings in Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052.
Complainant submits that the disputed domain name <bigbrotherafrica.com> is confusingly similar to Complainants trademarks BIG BROTHER and BIG BROTHER AFRICA.
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant states that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. A screen grab of Respondent’s home page shows the website is titled “Big Brother Africa”. This creates the impression that whatever the website offers is associated with Complainant and its trademarks BIG BROTHER and BIG BROTHER AFRICA. A closer inspection of the site indicates that the website associated with the disputed domain name offers nothing more than regular information and updates on developments on Complainant’s television series “Big Brother Africa”, an opportunity for visitors to the website to post comments regarding the “Big Brother Africa” television series and commercial advertising banners from third party advertisers. What is notable from the site is that large amounts of content has been copied verbatim from the Official Big Brother Africa Fan Site, whilst video clips taken from the Big Brother Africa series are made available on the site, have clearly been recorded, without authorization, from the Big Brother Africa series. It is submitted that this is not and there is no bona fide offering of goods and services. Respondent is trading mala fide on Complainant’s trademarks and is unlawfully attracting unsuspecting visitors to the site in order to gain commercially from the paid for advertising. Respondent has from as early as 2008 failed to offer any bona fide goods or services on the website associated with the disputed domain name, but has instead profited from its purported association with Complainant’s trademarks.
Complainant states that pay-per-click models may be bona fide but not when based on another’s trademark right to attract Internet visitors to the website. See Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc, Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203. “The pay-per-click business model, of itself, may be entirely legitimate. Similar advertising is widely experienced on the Internet and may for instance subsidize an information site or news outlet. Advertisements may be targeted to individual computer users by sophisticated assessment of their location and preferences. Many websites provide information, or act as directories, for the main or added purpose of generating pay-per-click revenue for referrals elsewhere. The operation depends on attracting viewers in the first place, and may not be bona fide if another’s trademark is used for that purpose in a domain name without authority.”
Complainant further states that to its knowledge, Respondent has not at any stage prior to or subsequent to this Complaint (whether as an individual, business, or other organization) been commonly known by the disputed domain name. In fact, Respondent shielded its details through PrivacyProtect.org.
Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. In this regard, Respondent’s website claims that it is an official fan website. This claim is false and a fabrication. It is fraudulently and deceptively misleading visitors to the website at the disputed domain name into believing that its fan website is official, endorsed by and associated with Complainant and its trademarks.
Complainant states that there is no basis for Respondent’s fan site to have generated or acquired rights or legitimate interests in the disputed domain name. Respondent’s claim that it is an “Official Fan Site of Big Brother Africa” is not assisted by either of the two earlier views expressed by WIPO’s panels on fan websites. The first view held by panels is as follows: “The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate noncommercial site.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.5. It is submitted that Respondent falls short in this regard. Its site is not distinctive from the official site, as the home page is titled “Big Brother Africa”. At the foot of the home page, the site states the following: “Copyright © 2012 BigBrotherAfrica.com, Official Fan Site Of Big Brother Africa”. Further, the foot of the website displays M-Net’s (the broadcaster) logo and Complainant’s logo. Complainant reiterates that the site is not an official website, it is not associated with either Complainant or M-Net and Respondent has no authority whatsoever to make use of any of Complainant’s intellectual property rights. Taking the UDRP panels’ first view into account, it is our submission that Respondent’s actions have contravened the Policy. In this regard, see Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
Complainant further submits that Respondent is not aided by the UDRP panels’ second view either, which can be summarized as follows: “A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.” For the reasons set out directly above, Complainant submits that Respondent is not operating a legitimate fan site.
Complainant states that in registering the disputed domain name <bigbrotherafrica.com>, Respondent knew or should have known that Complainant held rights in the trademarks BIG BROTHER and BIG BROTHER AFRICA. It is submitted that there is a reasonable inference that Respondent knew about the trademarks, given that, as is evident from Annex 5.17 to the Complaint, Respondent makes reference to “Big Brother Africa 1” and “Big Brother Africa 2” the first of which had been aired during 2003. Respondent also indicates its knowledge of the global awareness of the BIG BROTHER trademark by making reference (at page 3 of Annex 5.17 to the Complaint) to “Big Brother South Africa”, “Big Brother Nigeria”, “Big Brother USA”, “Big Brother UK” and “Big Brother Australia”. Further to what is stated above, the trademarks BIG BROTHER and BIG BROTHER AFRICA were widely displayed on the Internet from as early as 2003, as is evident from Annexes 6.1 – 6.10 to the Complaint. See Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517 in this regard.
Complainant states that Respondent provides pay-per-click advertising on the website associated with the disputed domain name. In providing advertising space on the website at the disputed domain name, Respondent is benefiting commercially from the fact that visitors to the site will be misled into believing that the site is that of the Complainant. Respondent is accordingly unlawfully trading on and benefiting from Complainant’s trademarks. This is exacerbated by the fact that Respondent through use of the expression “Official Fan Site of Big Brother Africa” leads both new visitors to the site and existing members of the site to believe that the site is associated with and endorsed not only by Complainant, but also by the broadcaster of the Big Brother Africa series, being M-Net.
Complainant further states that Respondent willfully and with complete disregard for Complainant’s and M-Net’s copyright and related intellectual property rights copies content verbatim, and images, from the Official Big Brother Fan site and places such content and images on its site. Further, Respondent had until about the end of June 2012 been uploading video clips to YouTube and linking to them from the website associated with the disputed domain name. Pursuant to complaints from Complainant and M-Net, YouTube disabled all video clips uploaded by Respondent. Respondent has subsequently commenced use of a service known as Dailymotion and now uploads video clips to this site. Complainant has at no stage authorized Respondent to use any of its intellectual property rights on the website associated with the disputed domain name.
Complainant further states that Respondent has a link from the disputed domain name <bigbrotherafrica.com> to a Facebook page which it has created under the name “BigBrotherAfrica.com”. Complainant and M-Net also maintain a Facebook page under the name Big Brother Africa. If regard is had to Annexes 8.1 and 8.2 to the Complaint a number of illegal intellectual property infringements become evident. The 2012 series of Big Brother Africa was published under the subtitle Big Brother Africa – Stargame. A unique logo was commissioned and produced for the 2012 series. The logo is represented at the top of Annex 8.1 to the Complaint, which is a printout from Complainant’s Facebook page. The unique logo is made up of a gold eye, with the words Big Brother Africa Stargame below it. If Annex 8.2 to the Complaint is viewed, it is evident that the unique logo is being used by Respondent on its Facebook page. Such use has at no stage been authorized by Complainant. Although the use of the unique logo is occurring on Respondent’s Facebook page, which is on a separate domain, by linking to the Facebook page from the <bigbrotherafrica.com> page, Respondent perpetuates the misrepresentation that is associated with Complainant and authorized to use Complainant’s unique logo. If one considers the highlighted text on Annexes 8.1 and 8.2 to the Complaint, it is evident that Respondent has without authorization copied the image of the Big Brother Africa housemates exercising and has plagiarized the content that was placed on the Facebook page by Complainant and M-Net. Whilst the unauthorized use of the image and the plagiarized text is, in this example, not occurring on the webpage associated with the disputed domain name <bigbrotherafrica.com>, it is submitted that Respondent’s Facebook page is, as a result of the link from the disputed domain name, an extension of Respondent’s website at the disputed domain name and is a further example of the bad faith use of the disputed domain name <bigbrotherafrica.com>.
Respondent submits that the dispute between the Parties relates to Respondent’s right to use the disputed domain name is a contractual issue and not an issue relating to cybersquatting. Respondent states that the Panel’s jurisdiction is limited to providing a remedy in cases of the abusive registration of domain names, or cybersquatting. “Final Report of the WIPO Internet Domain Name Process” (paragraphs 169, 170).
Respondent states that Da Tang Co. Ltd was formed as Chinese Company in 2000. In 2008, Da Tang Co. Ltd bought the disputed domain name <bigbrotherafrica.com> from Sedo.com. At that time, the disputed domain name was not in use, and remained a parked page for some time. Upon information and belief, the disputed domain name was first registered on April 5, 2006. In the middle of 2008, Da Tang Co. Ltd made the disputed domain name a Big Brother Africa fan site.
Respondent states that since the inception of the website “www.bigbrotherafrica.com” in early 2008 it has been operated as a fan website of the African version of the Big Brother reality game show. On August 4, 2008, Job Bakama ([ ]@mnet.co.za) a purported employee with M-Net, an authorized representative of Complainant, contacted Respondent requesting it to become an official fan website of the “Big Brother Africa” television show. Job Bakama on behalf of M-Net (Complainant’s authorized representative) agreed to support Respondent by linking the website “www.bigbrotherafrica.com” as the official fan site of Big Brother in Africa on M-Net’s “www.mnetafrica.com/bigbrother” website. The same person (Job Bakama) agreed to design a logo for Respondent’s website which together with the link to “www.bigbrotherafrica.com” he put on M-Net’s website for a long time. In turn, Job Bakama on behalf of M-Net asked Respondent to put the M-Net and Endemol’s logos, the logos of the producer and broadcaster of “Big Brother” respectively as the official website together with a reciprocal link to “www.mnetafrica.com” referring viewers to the M-Net website.
Respondent denies the allegations in the Complaint that it communicated with “Job Bakena” instead of Complainant. Respondent always kept in touch with “Job Bakama” (as seen in Annex A-A.e to the Response) who worked with M-Net and he was the same person who permitted Respondent to use the tag “Official fan site”, put the link of “www.bigbrotherafrica.com” on M-Net’s official website and included the disputed domain name among the fan sites on M-Net’s official webpage “www.mnetafrica.com/bigbrother”. (Annex B-B.a to the Response). However, if the allegations are true that Complainant changed the production agreement with M-Net in the 2012 production agreement, it was Complainant’s responsibility to look into the contracts M-Net was holding with any party to see if it could continue with or terminate such contracts. This takes the Complaint totally out of being a domain name dispute into a contract dispute which belongs to another court.
Respondent further submits that although Complainant attempts to disguise this contract dispute as a domain name dispute, the facts show that this is a contract dispute, and that this action was brought in bad faith to make the Panel believe that it is a domain name dispute, yet it is not. Additionally, the facts support that Respondent had and still has fair use of the disputed domain name. Respondent started operating as an official fan site of “Big Brother Africa” with the express permission of Complainant’s authorized representative. There is no confusion other than the misleading information provided by Complainant. This is a civil contract dispute, and this Panel lacks sufficient ground to hear this case.
Respondent denies that the disputed domain name was registered and being used in bad faith as it is clearly shown that Complainant holds no rights in the expression “Big Brother Africa”, but it intends to harass Respondent by mistaking a contract dispute for a domain name dispute. Respondent requests the Panel to dismiss the case based on allegations about copying content, as this was in the original contract Respondent had with M-Net (through Job Bakama). But during the time of taking over, Complainant did not consider if it was to continue or terminate the contract with Respondent. For a clean contract, Complainant had to alert Respondent that it and M-Net had changed a production agreement. By doing this Complainant would also have to inform Respondent that all the contracts M-Net had with Respondent were terminated. This part of the Complaint makes it a contract dispute and thus not suitable for the Panel to intervene as it lacks jurisdiction.
Respondent further submits that Complainant tried to purchase the disputed domain name from Respondent with a financial offer of USD 5,000. Going by the fact that Complainant tried to purchase the disputed domain name from Respondent, it clearly shows how Complainant knew that Respondent had full rights to the disputed domain name. But because Respondent was not willing to sell off the disputed domain name, Complainant wants to hijack it by using this administrative proceeding. This is totally not a domain name dispute and Respondent requests the Panel to dismiss the matter.
Complainant clearly shows that it owns the trademark BIG BROTHER because it registered it, but it has failed to prove ownership of a trademark for “Big Brother Africa”. The disputed domain name is not identical or confusingly similar to the trademark in which Complainant has rights because Complainant does not own a trademark for “Big Brother Africa”.
Respondent further states that, talking about common law trademark, if any party doesn’t know about the use of a certain mark but also dealing with the same product there is a possibility for it to use the same trademark. Respondent states that it has a right to use the disputed domain name as the trademark BIG BROTHER AFRICA does not belong to Complainant. Respondent is the owner and user of the fan website of “www.bigbrotherafrica.com” in Africa and most of its followers are located in the same region which makes Respondent owner of the trademark BIGBROTHERAFRICA.COM and by common law thus has full rights to the disputed domain name <bigbrotherafrica.com>.
Respondent denies that the disputed domain name is identical or confusingly similar to that in which Complainant has trademark rights, based on the fact that Respondent itself owns the trademark BIG BROTHER AFRICA by common law.
Respondent admits that Complainant owns the trademark BIG BROTHER worldwide but not “Big Brother Africa”. Additionally, Respondent wishes to clarify that Complainant’s ownership of Big Brother format doesn’t grant it ownership to anything that is added to “Big Brother”. For instance, there is “www.bigbrotherinafrica.com”, “www.bigbrotherafrica.net” and “www.bigbrotherafrica.com” which all are Big Brother fan sites but don’t belong to Complainant and Complainant has no rights to them.
Respondent states that Complainant intends to prove that it has common law trademark rights in “Big Brother Africa” by tagging the mark to its subtitles, the evidence shows a different thing. From the evidence Respondent has gathered, Complainant’s titles were “Big Brother followed by a certain subtitle” not as Complainant claims that they were named “Big Brother Africa followed by that subtitle.” Annex F to the Response showing, Big Brother Revolution, Big Brother All Stars, Big Brother Amplified, Big Brother Stargame together with their respective logos as they were used by Complainant. With this evidence, Respondent is hereby informing the Panel that Complainant truly owns the trademark BIG BROTHER but not “Big Brother Africa”.
Respondent submits that although Complainant has managed to secure the trademark BIG BROTHER in the regions where it produces the series, Complainant has failed to secure “Big Brother (that region)” as its trademark and this completely means that its claim that it owns “Big Brother Africa” as a trademark is wholly incorrect and holds no water.
Respondent denies allegations that it has no rights or legitimate interests in the disputed domain name, Respondent also denies that it doesn’t use the disputed domain name in connection with a bona fide offering of goods or services because the fact is that it does. While Complainant may accuse Respondent to entirely depend on Complainant’s series to update the site, Respondent would like to clarify that Respondent’s website “www.bigbrotherafrica.com“ ever since its inception, has been updated on a daily basis before the show starts, during the show itself and even after when the show is closed unlike Complainant who only updates during the show.
Respondent further states that the website associated with the disputed domain name is used as a fan site; as such, it not only provides updates about the housemates only when they are inside the Big Brother house, but also outside the house which is not done by either Complainant or its affiliates. Only this explains the legitimate interests Respondent has in the disputed domain name.
Respondent states that with respect to the issue of bona fide goods and services, Respondent runs the number one discussion portal for the Big Brother Africa fans on “www.bigbrotherafrica.com/forum”. This forum is found on no other website except “www.bigbrotherafrica.com”. This confirms that Respondent has rights and legitimate interests in the disputed domain name and if not mistaken, Respondent believes that this was among other reasons why Complainant tried to purchase the disputed domain name from Respondent.
Respondent further states that it denies allegations that it remains unknown as mentioned in the Complaint. Respondent (as an individual, business or other organization) has been or is commonly known by the disputed domain name as “Bin Jiang” of Da Tang co. ltd. Please see the WhoIs for <bigbrotherafrica.com> and also Annex E to the Response even if it has acquired no trademark or service mark rights.
Respondent states that before it received the dispute notice on January, 16, 2013, the website at the disputed domain name <bigbrotherafrica.com> was in use. This is confirmed by the attached Annex D to the Response showing news updates before the date. Furthermore, Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. Respondent wants to clear the air by saying that everything on the website is 100% free, there is nothing paid for by the followers or any other viewer of the website, right from registering with the website, sharing and downloading content, chatting, among others. This completely explains why Respondent’s interests in the disputed domain name are purely legitimate. The pay-per-click system as alleged by Complainant is a genuine one which does not seduce users and is meant only to meet the simple costs like renewing and hosting the disputed domain name. This makes the website a noncommercial fan website as it doesn’t charge its fans any single penny to view, share or download the content.
Respondent states that it bought and procured the disputed domain name in 2008. In 2008 the official website for Complainant’s Big Brother Africa television series was “www.mnetafrica.com”. Respondent’s website “www.bigbrotherafrica.com” kicked off as a fan website after observing that Complainant had an already existing official website. This clearly shows that Respondent did not register the disputed domain name to prevent Complainant from reflecting its mark because it was already being portrayed through the website “www.mnetafrica.com”.
Respondent further states that based on communications between Respondent and Job Bakama (of M-Net), it clearly indicates that the two parties had an initial contract before it was breached by Complainant’s interference which ended up terminating the contract between M-Net and Respondent. After the agreement between M-Net and Respondent the two acted as partners which meant no competition. Respondent states that it does not intend to compete with Complainant and neither does it want to disrupt Complainant’s business.
Respondent states that the disputed domain name is used in good faith in association with a fan site for Internet users following the Big Brother Africa television programs. Being a totally free website which does not charge a single penny from the fans and other viewers, Respondent is not using the disputed domain name for any commercial gain. With this, a link and logo were interchanged between the two parties and at no point did Respondent show how its website was confusing any other user.
Respondent states that Respondent and Complainant’s affiliate M-Net (through Job Bakama) reached an agreement /contract and Respondent agreed to become an official fan site to the show Big Brother as evidenced in the attached annexes. Shortly thereafter, Complainant’s affiliate M-Net listed Respondent’s “www.bigbrotherafrica.com” website on its official website “www.mnetafrica.com” under the heading “Fan Site” to have their users refer to its website and use it to support its own website. As per their contract to be an official fan website, they agreed and a link was placed on Respondent’s website to let its users go to M-Net’s official website. Respondent’s website “www.bigbrotherafrica.com” has, since this contract, been operated under an express agreement to be an official fan website.
Respondent submits that all the allegations made by Complainant are intended to harass Respondent. Respondent requests the Panel to proceed with findings of Reverse Domain Name Hijacking.
Respondent relies on the statements made above that Complainant has no common law rights in “Big Brother Africa”; that Complainant was permitted by Complainant’s affiliate to use the disputed domain name as an official fan site and that Complainant had no right to interfere with Respondent’s agreement without informing Respondent.
Respondent further states that Complainant asserted that it wanted to settle the dispute with a financial offer of USD 5,000, which makes it clear to all that Complainant knew that Respondent rightfully owned the disputed domain name.
A very brief summary of the contentions of the Parties follows.
Respondent’s principle contention is that the dispute between the Parties is a contractual dispute and not a cybersquatting dispute. Respondent contends that the Panel has no jurisdiction under the UDRP to hear a matter which is primarily a contractual dispute.
More particularly, Respondent contends that it received a license or permission from an employee or representative of M-Net, the broadcaster of the “Big Brother Africa” reality TV series, to use the disputed domain name as a fan site for the “Big Brother Africa” TV series. Respondent further contends that its use of the disputed domain name was not for profit, but only as a fan site. Respondent contends that any advertising income was used only to grow the content on the “www.bigbrotherafrica.com” website for the benefit of fans of the “Big Brother Africa” TV series.
Complainant contends that M-Net, its employees or agents had very limited rights to use the trademarks BIG BROTHER or BIG BROTHER AFRICA in association with the broadcast of the “Big Brother Africa” TV series. Complainant contends that M-Net, its employees or agents had no right to license or grant permission to anyone to use the trademarks BIG BROTHER or BIG BROTHER AFRICA as a trademark or in any other manner which might negatively affect the rights of the Group in the BIG BROTHER or BIG BROTHER AFRICA trademarks. Complainant contends that any purported license or permission to Respondent from M-Net, its employees or agents to use the disputed domain name has no foundation in law.
Complainant contends that Respondent commenced using the disputed domain name in association with a website relating to the “Big Brother Africa” TV series, without permission, before any contact with M-Net, its employees or agents. Complainant further contends that Respondent is a cybersquatter. More particularly Complainant contends that Respondent has copied and utilized copyright material relating to the “Big Brother Africa” TV series without permission; offered for sale and sold videos of “Big Brother Africa” material without permission; charged advertisers for placing advertisements on the webpage associated with the disputed domain name and received pay-per-click income from owners of live links on the website associated with the disputed domain name.
Following the above summary, the facts will be reviewed chronologically.
Endemol International BV (“EI”), founded in 1994, is one of the largest independent television and digital production company in the world. It comprises a global network of more than 80 companies in 31 countries including the USA, the UK, Spain, Italy, France, Germany and the Netherlands, as well as Latin America, India, South Africa and Australia. Endemol works with approximately 300 broadcasters, digital platforms and licensees worldwide and covers all elements of the entertainment spectrum including development, production, marketing, distribution and franchise management. Its credits include international hits such as Big Brother, Deal or No Deal, 1 vs. 100, Wipeout and The Money Drop.
Among its activities EI creates and develops original television programs. The bundle of intellectual property rights associated with an original program is referred to as Formats. Formats are generally defined as “the overall concept, premise and branding of a copyrighted television program”. One of the Formats created and developed by EI is the Big Brother Format. The Big Brother Format is reviewed in Section 4 above. Television series based on the Big Brother Format are produced in Albania, Argentina, Australia, Belgium, Brazil, Bulgaria, Canada, Chile, Colombia, Croatia, Czech Republic, Denmark, Ecuador, Finland, France, Germany, Greece, Hungary, India, Indonesia, Israel, Italy, Malta, Mexico, the Netherlands, Niger, Nigeria, Norway, Peru, Philippines, Poland, Portugal, Romania, Russian Federation, Serbia, Slovakia, Slovenia, South Africa, Spain, Sweden, Switzerland, Thailand, Ukraine, UK and the USA amongst others.
A second company of the Endemol group is Endemol Netherlands B.V. Much of the intellectual property related to the Formats including the Big Brother Format became housed in Endemol Netherlands B.V.
Complainant, a third company of the Endemol group, is a corporation incorporated in South Africa in 1996 by EI. Complainant was licensed by EI to market, produce and allow for the broadcast of television programs in Africa. Pursuant to Complainant’s license with EI Complainant is obliged to assist EI and therefore Endemol Netherlands B.V., to protect its Format rights and the intellectual property rights attached to it.
Endemol Nederland B.V. is the registered owner of the trademark BIG BROTHER registered in classes 9 and 41 over thirty countries throughout the world. The registration includes goods and services associated with elements of the entertainment spectrum including development, production, marketing, distribution and franchise management relevant to the Big Brother Format. Complainant is a licensee of the BIG BROTHER trademarks for use in marketing, producing, and allowing for the broadcast of Big Brother television programs in Africa. The trademark BIG BROTHER was first registered in the Benelux region under trademark application number 937276 on April 28, 1999. The trademark BIG BROTHER was first registered in South Africa between 28 April 1999 and October 28, 1999 in classes 9 (reg. no. 1999/19969), 16 (reg. no. 1999/19970), 25 (reg. no. 1999/19971), 28 (reg. no. 1999/19972) and 41 (reg. no. 1999/19973). The trademark BIG BROTHER was first registered in China on January 29, 2004 and in Nigeria on May 4, 2006. Complainant’s license is limited to Africa.
In terms of deal memoranda between EI and Complainant, Complainant was afforded further rights in respect of producing a series for the pan-African market known as “Big Brother Africa”. The first such deal memorandum was concluded in 2003 and entailed the series being produced for M-Net which broadcasts on MultiChoice’s DSTV commercial satellite broadcasting bouquet.
M-Net is a private broadcasting company providing an array of general entertainment and niche channels in Africa. MultiChoice is an independent satellite provider. M-Net broadcasts shows for other owners as well as movies, news etc. in Africa. M-Net’s official domain name is <mnetafrica.com> and when specifically used in association with “Big Brother Africa” productions is at the website “www.mnetafrica.com/bigbrother”.
The disputed domain name <bigbrotherafrica.com> was first registered by MultiChoice in 2003 and shortly thereafter transferred to Complainant. The first webpage relating to the disputed name for the year 2003 as seen on “The Internet Archive WayBack Archive Machine” is a webpage dated February 4, 2003 in which M-Net announces that it will be producing chapter one of Big Brother Africa show which will be seen through its service provider Multichoice. The webpage associated with the disputed domain dated June 29, 2003 included the Endemol and Big Brother Africa logos as well as a report on who had been nominated to leave the 2003 Big Brother Africa show by the viewers. The webpage also included a section having the heading “Quick Links”. One of the links was “Big Brother UK Website”. The Panel searched on Google “Big Brother UK” and found that it was associated with the domain name <bigbrotheruk.com>. A WhoIs search conducted by the Panel for the domain name <bigbrotheruk.com> on February 25, 2013 showed that <bigbrotheruk.com> was registered on July 13, 2008. The registrant contact details named Da Tang co. ltd., Bin Jiang as the registrant of the domain name <bigbrotheruk.com>. The administrative contact details, the technical contact details and the billing contact details also named Da Tang co. ltd. and Bin Jiang at the same address as that of Respondent in this case.
The webpage dated July 2, 2005 associated with the disputed domain name disclosed the Endemol and Big Brother Africa logos, mentioned the 2003 Big Brother Africa show and advised Internet visitors that they could view Big Brother shows which are happening all over the world.
Complainant failed to renew the disputed domain name in a timely manner in 2006.
WhoIs results for the disputed domain name dated February 16, 2013 showed that the disputed domain name has a registration date of April 5, 2006. The registrant contact details shows Da Tang co. ltd., Bin Jiang having the same address as Respondent in this case. The administrative, technical and billing contact details also show Da Tang co. ltd. and Bin Jiang.
The April 12, 2006 webpage for the disputed domain name as shown on “The Internet Archive Wayback Machine” resolves to a webpage having links to US television shows.
The July 7, 2007 webpage associated with the disputed domain name is a Sedo page comprised of a series of advertisements and an announcement that: “The owner of <bigbrotherafrica.com> is offering it for sale for an asking price of 2,000 $ US!”.
The May 12, 2008 webpage associated with the disputed domain name features the title “Bigbrotherafrica.com” with a design below it on the top left of the webpage. On the right top opposite the design is the title: “Welcome to Bigbrotherafrica.com”. Below the title is the statement: “Bigbrotherafrica.com is your gateway to sites on the Internet for financial services! Browse our resources or just try the search.” The remainder of the page contains links to financial institutions and services. A column on the very right of the page and a line at the bottom of the page list broad miscellaneous advertising headings such as fitness, dating, etc.
The July 6, 2008 webpages associated with the disputed domain name relates to forums for: “Big Brother Africa”; “Big Brother Africa 3”; “Big Brother Africa 2”; “Big Brother Africa 1”; Big Brother International” which includes “Big Brother South Africa”, “Big Brother Nigeria”, Big Brother USA”, “Big Brother UK”, “Big Brother Australia”, and International Big Brother which includes Big Brother shows in Belgium, Brazil, Bulgaria, Canada, Colombia, Czech Republic, Denmark, Ecuador, Finland, France, Greece, Hungary, India, Italy, Malta, Mexico, the Netherlands, Norway, Portugal, Romania, Russian Federation, Scandinavia, Serbia, Slovakia, Sweden, Switzerland and Thailand. Internet visitors to the website are invited to submit their comments on any of the “Big Brother Africa” and “Big Brother” shows mentioned above. The topics under the “Big Brother Africa” headings go into substantial detail inviting comments about housemates, named winners; the Penthouse of Big Brother Africa 2; fake evictions: the Diary Room; and other detailed events which occurred during the shows. The website is three pages long and live links are associated with the titles and subtitles.
The July 6, 2008 webpages also include a heading “General Chat” which includes an invitation to discuss other reality TV shows including Idols, The Apprentice, Britain’s Got Talent, I’m a Celebrity and The X Factor. A space is provided near the top of the first page and near the bottom of the last page with the notation “your ad here”.
The alleged agreement between the Parties is the next matter in the chronology of events. Before proceeding to the alleged agreement the Panel will consider the Parties contentions on matters which occurred prior to the alleged agreement.
Complainant asserts that Respondent had commenced use of the disputed domain name prior to having obtained the purported permission from M-Net and accordingly was using Complainant’s BIG BROTHER and BIG BROTHER AFRICA trademarks, knowing that the trademarks were owned by Complainant before the purported agreement.
Respondent contends, upon information and belief, the disputed domain name was first registered on April 5 2006. Respondent asserts that Da Tang Co. Ltd bought the disputed domain name from Sedo.com in 2008, at which time Respondent asserts that the disputed domain name was not in use, and remained a parked page for some time. Respondent asserts Da Tang Co. Ltd made the disputed domain name a Big Brother Africa fan site in the middle of 2008. Respondent contends that it always had and still has fair use of the disputed domain name. Respondent asserts that it started operating as an official fan site of “Big Brother Africa” with the express permission of Complainant’s authorized representative.
The only recorded date of acquisition of the disputed domain name by Respondent is the WhoIs date of April 5, 2006. Respondent has not submitted any proof that it acquired the disputed domain name at a later date, although such information is only available to Respondent. The Panel finds that Respondent posted webpages incorporating Complainant’s BIG BROTHER and BIG BROTHER AFRICA trademarks on the website associated with the disputed domain name at least as early as July 6, 2008 prior to any contact with Complainant or any of its agents. The information on the July 6, 2008 website shows that Respondent had a thorough knowledge of the Endemol format for both the Big Brother and Big Brother Africa reality shows. The July 6, 2008 webpages disclose that Respondent had knowledge of the many countries throughout the world where Big Brother shows were aired by Endemol and its subsidiaries. Respondent’s July 6, 2008 webpages also disclosed Respondent’s detailed knowledge of Complainant’s Big Brother Africa 3”, “Big Brother Africa 2” and “Big Brother Africa 1” shows including details about housemates, named winners; the Penthouse of Big Brother Africa 2; fake evictions: the Diary Room; and other detailed events which occurred during these Big Brother Africa shows.
As mentioned above, a WhoIs search conducted by the Panel for the domain name <bigbrotheruk.com> on February 25, 2013 showed that the domain name <bigbrotheruk.com> was registered on July 13, 2008. The registrant contact details named Da Tang co. ltd. and Bin Jiang. The administrative contact details, the technical contact details and the billing contact details also named Da Tang co. ltd. and Bin Jiang having the same address as that of Respondent in this case. There is no evidence that Respondent informed Job Bakama of M-Net of its registration of the domain name <bigbrotheruk.com> or that such website was not being used as a commercial site as early as August 27, 2008 during discussions in which Respondent expressed its interest in using the disputed domain name <bigbrotherafrica.com> as a fan website. During the discussion about permission to use the disputed domain name as a fansite which follows, Respondent inquired if Complainant was going to produce videos of “Big Brother Africa” shows as was done with respect to the ”Big Brother” shows in the UK.
The only record of the alleged agreement between the Parties permitting Respondent to use the disputed domain name as a fan website are Respondent’s copies of emails and partial transcripts of online communications between Job Bakama of M-Net, the broadcaster of “Big Brother Africa”, and Max Tang representing Respondent occurring between August 4, 2008 and September 2, 2008. Complainant has no record of the communications and contends that neither Complainant nor M-Net had authority to grant a license or permission to Respondent to do anything which might impair the groups rights in the BIG BROTHER or BIG BROTHER AFRICA trademarks. Further, Complainant contends that Job Bakama was not an employee of M-Net but was employed by an agent used by M-Net.
On August 4, 2008 Job Bakama sent an e-mail to “[ ]@bigbrotherafrica.com”. The subject was “BBA 3”. BBA is an acronym for “Big Brother Africa”, while the numeral 3 identifies the third “Big Brother Africa” show which ran from August 24, 2008 until November 23, 2008. Job Bakama stated: “We see that you have launched “www.bigbrother.com”. The reference to <bigbrother.com> is in error as Bakama obviously meant the disputed domain name <bigbrotherafrica.com>. The domain name <bigbrother.com> has been registered by Endemol since July 24, 1995. Returning to the content of the email, Bakama stated: “We’d like to talk to you about being an official fansite of BBA. Are you Interested? Give me a call or drop me a line.” The email was signed “Job “jobie” Bakama, Mnet Africa, CH O & Social Networks”. Max Tang replied to Job Bakama by email about two hours later stating that Respondent does have an interest to be an official fan site of BBA. Max Tang stated that he was in Uganda at the time and stated that the best way to discuss this was through chatting on line or email. Max Tang also provided Mr. Bakama with further emails and a telephone number and advised that if possible they could also discuss the matter with their Uganda local office.
On August 26, 2008, Max Tang sent an email to Job Bakama under the subject heading “BBA 3”. Max Tang stated “I would like to know if you can provide us some videos and other contents? Max Tang raised the issue of videos again during an online call with Mr. Bakama on September 2, 2008 where he asked: “Does mnet have some dvd for big brother Africa for sale?” Mr. Bakama replied: “right now most of our content is ours so it works out for everyone they do not sell dvds of the show.” Max Tang replied: “I see on UK big brother, they do have some dvd to public normally after certain housemates get evicted they will have the dvd for this housemate.” Job Bakama replied: “Yah but on Africa they don’t there is a lot of things the international shows do we don’t”. Max Tang replied: “many people consider to have these types of types and dvds. Can you suggest this?” Bakama replied: “I just did to the producers and they are not interested right now; they are sitting across the hall from me. Did you see my name in the credits?” Max Tang replied: “ok”.
In the online call of September 2, 2008, Max Tang also requested that a link to Respondent’s website associated with disputed domain name be placed in a prominent place on Complainant’s official webpage “www.mnetafrica.com/bigbrother”. Mr. Bakama would not agree and advised Max that the link to Respondent’s website would be placed with other links to fansites in the fan site section of “www.mnetafrica.com/bigbrother”.
In the online call of September 2, 2008, Respondent was permitted to use the M-Net Big Brother Africa logo providing the link “www.mnetafrica.com/bigbrother” was added at the top and bottom of Respondent’s webpage associated with the disputed domain name.
Before entering into any interpretation of the alleged agreement the Panel has to consider Complainant’s submission that there is no agreement as neither Complainant nor M-Net had authority to grant a license or permission to Respondent to do anything which might impair the group’s rights in the BIG BROTHER or BIG BROTHER AFRICA trademarks. Complainant contends that Job Bakama was not an employee of M-Net but was employed by an agent used by M-Net. In the letter of August 4, 2008 from Job Bakama to Respondent Mr. Bakama informed Respondent that: “We’d like to talk to you about being an official fan site of BBA. Are you interested?” Mr. Bakama sent the email from the email address “[ ]@mnet.co.za” and signed off as “Job “jobie” Bakama, Mnet Africa, CH O & Social Networks”. Respondent’s email in response to his email address reached Mr. Bakama. There was nothing in the ensuing discussions and subsequent addition of Respondent and the disputed domain name under the heading “Fan Site” on Complainant’s official webpage to indicate that Mr. Bakama did not have authority to do what he did. The Panel is of the view that Respondent did not have to question Mr. Bakama ostensible authority.
The subject found at the top of the emails between the Parties about Respondent using the disputed domain name as a fan site was BBA 3. Mr. Bakama informed Respondent he was working on M-Net’s official webpage for BBA 3. As noted above BBA 3 is the acronym for the third “Big Brother Africa” show produced and broadcast in 2008. Is the agreement for the BBA 3 show or is the agreement for an unlimited number of years? Other than the subject description there is no reference to be found to the term of the agreement. Mr. Bakama appears to be directing his mind to the BBA 3 production. Respondent did not suggest a change in the subject of the agreement but the Panel notes that Respondent continued to describe itself as “Official Fan site” in 2008 and in webpages relating to “Big Brother Africa” productions in following years. Complainant dropped the heading “Fan Sites” from the webpages associated with its “www.mnetafrica.com/bigbrother” site by 2010. Respondent never placed the “www.mnetafrica.com/bigbrother” link at the top and bottom of the webpages on the “www.bigbrotherafrica.com” website as agreed between the Parties.
The Panel finds that the term of the agreement was limited to the BBA 3 production as stated under the heading “Subject”.
The UDRP recognizes that the registrant of an active and noncommercial fan site may have rights or legitimate interests in a domain name that includes the complainant’s trademark. See WIPO Overview 2.0, paragraph 2.5, second UDRP element.
Respondent asserts that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. Everything on the website is 100% free, there is nothing paid for by the followers or any other viewer of the website right from registering with the website, sharing and downloading content, chatting, among others. Respondent asserts that its interests in the disputed domain name are purely legitimate. The pay-per-click system as alleged by Complainant is a genuine one which does not seduce users and is meant only to meet the simple costs like renewing and hosting the disputed domain name. This makes the website a noncommercial fan website as it doesn’t charge its fans a single penny to view, share or download the content.
The Panel finds that Respondent is creating videos using Complainant’s “Big Brother Africa” content without permission, advertising the videos for sale on the website associated with the disputed domain name and downloading the videos to purchasers. As discussed above, Respondent unsuccessfully sought to include Complainant’s content and videos in the agreement between the Parties. Links to the videos are prominently shown on the webpages associated with the disputed domain names from 2008 to 2012.
Various webpages screenshots associated with the disputed domain name were attached as annexes to the Complaint. Respondent’s website for “www.bigbrotherafrica.com” dated July 7, 2010, aside from Respondent’s standard advertisements includes a fourth page ending with 27 live links relating to a variety of subjects. The Panel clicked on the link “Make Money Online”. The link resolved to a webpage associated with the domain name <makemoney.mn>. The Panel conducted a WhoIs search for <makemoneyonline.com>. The results of the WhoIs search disclosed the registrant as Bin Jiang. The registrant organization was shown as Da Tang co. ltd. having the same address as Respondent. As Max Tang who represented Respondent in the negotiations with Mr. Bakama stated that he was then in Uganda the Panel clicked on the link “Jobs East Africa”. The webpage disclosed the domain name <jobseastafrica.com>. A WhoIs search for <jobseastafrica.com> showed the registrant contact details as Da Tang co. ltd., Bin Jiang. Similar columns of live links are included on “www.bigbrotherafrica.com” website in later years.
The Panel finds that Respondent’s use of the website associated with the disputed domain name to post live links on such website to other domain names belonging to Respondent was never part of any agreement with Respondent and together with selling videos relating to “Big Bother Africa” on the website associated with the disputed domain name without Complainant’s permission is commercial use of the disputed domain name outside acceptable use of a fan site.
The Panel finds that based on the facts and findings recited above the case falls within the jurisdiction of the UDRP.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of trademark registrations for the trademark BIG BROTHER registered in over thirty countries throughout the world. The details of the registrations are reviewed in Section 4 above. The trademark BIG BROTHER is a well-known trademark throughout the world in association with the production and broadcasting of Complainant’s BIG BROTHER reality shows.
Complainant also asserts that it is the owner of common law trademark rights in Africa in the trademark BIG BROTHER AFRICA in relation to reality TV shows. The unregistered trademark BIG BROTHER AFRICA is associated with the series Big Brother Africa, which is broadcast to over 51 countries and territories in Africa via commercial satellite broadcaster MultiChoice’s DSTV service. The Big Brother Africa series has, apart from 2004, 2005 and 2006, been broadcast annually across Africa since 2003. Broadcasts resumed in 2007 and from season 4 (2009) onwards each season was given a subtitle with the subtitles being Big Brother Africa – Revolution (2009), Big Brother Africa All-Stars (2010), Big Brother Africa – Amplified (2011) and the current series Big Brother Africa – Stargame (2012). Respondent asserts that from 2008 onward the subtitles were used with BIG BROTHER and not with “Big Brother Africa”. Complainant attached as annexes to the Complaint extracts from various websites, publications and research for the years 2003 to 2011 indicating substantial coverage of the Big Brother Africa television show and persons appearing on the Big Brother Africa television show across the African continent.
The UDRP recognizes common law or unregistered trademark rights providing Complainant shows that the trademark has become a distinctive identifier associated with Complainant or its goods or services. See WIPO Overview 2.0, paragraph 1.7. Relevant evidence of such secondary meaning includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. Under the “Big Brother Africa” Format, twelve people from different countries in Africa are selected to become housemates after advertising for housemate positions is announced and selection processes for housemates is carried out in the chosen countries. The selection process generates considerable media and Internet coverage each year. The “Big Brother Africa” shows run for 100 days each year. Respondent’s webpages associated with the disputed domain name show frequent use of “Big Brother Africa” as the title of Complainant’s show. As early as 2008 there were at least seven active fan sites covering all aspects of the relationships of the housemates and discussions about which housemate was likely to be evicted. As mentioned above, Complainant provided as annexes to the Complaint copies of a broad range of media coverage of the “Big Brother Africa” reality show.
The Panel finds that Complainant has established unregistered trademark rights in BIG BROTHER AFRICA for purposes of the Policy, as this term distinguishes its reality TV show through most of Africa where it is shown.
The disputed domain name <bigbrotherafrica.com> is identical to Complainant’s trademark BIG BROTHER AFRICA and confusingly similar to Complainant’s trademark BIG BROTHER which is well-known throughout the world.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name <bigbrotherafrica.com> is identical to Complainant’s trademark BIG BROTHER AFRICA and confusingly similar to Complainant’s trademark BIG BROTHER.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The registrant of an active and noncommercial fan site may have legitimate interests in a domain name that includes the complainant’s trademark or trademarks. See WIPO Overview 2.0, paragraph 2.5. Respondent claims it is using the disputed domain name <bigbrotherafrica.com> which is identical to Complainant’s trademark BIG BROTHER AFRICA and confusingly similar to Complainant’s trademark BIG BROTHER as a fan site. The Panel finds that Respondent’s provision of active video links to videos without any connection to Complainant’s Big Brother Africa production is a commercial activity and not a bona fide use of the disputed domain name as a fan site. In addition the use of live links on the webpages associated with the disputed domain name which resolve to other websites owned by Respondent is a not a bona fide use of a fan site.
The Panel finds on a balance of probabilities that Complainant has established that Respondent has used the disputed domain name for unauthorized commercial activity and has no rights or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
Complainant produced and broadcast “Big Brother Africa 1” in Africa in 2003, “Big Brother Africa 2” in 2007 and “Big Brother Africa 3” which was shown in 2008 and was in preparatory stages in the middle of 2008 when Respondent alleges it acquired the disputed domain name <bigbrotherafrica.com>.
The July 6, 2008 webpages associated with the disputed domain name relates to forums for “Big Brother Africa”, “Big Brother Africa 3”, “Big Brother Africa 2”, “Big Brother Africa 1” and Big Brother International” which includes “Big Brother South Africa”, “Big Brother Nigeria”, Big Brother USA”, “Big Brother UK”, “Big Brother Australia”, and “International Big Brother” which includes Big Brother shows in Belgium, Brazil, Bulgaria, Canada, Colombia, Czech Republic, Denmark, Ecuador, Finland, France, Greece, Hungary, India, Italy, Malta, Mexico, the Netherlands, Norway, Portugal, Romania, Russian Federation, Scandinavia, Serbia, Slovakia, Sweden, Switzerland and Thailand. Internet visitors to the website are invited to submit their comments on any of the “Big Brother Africa” and “Big Brother” shows mentioned above. The topics under the “Big Brother Africa” headings go into substantial detail inviting comments about housemates, named winners; the Penthouse of Big Brother Africa 2; fake evictions: the Diary Room; and other detailed events which occurred during the shows. The website is three pages long.
Based on the facts and findings of the Panel in Section 6 under the heading Jurisdiction and B Rights or Legitimate Interests, the Panel finds that Respondent registered the disputed domain in bad faith with knowledge of Complainant’s Big Brother Africa productions in Africa and Big Brother production throughout many parts of the world.
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Based on the facts and findings of the Panel in Section 6 under the heading Jurisdiction and B, Rights or Legitimate Interests, the Panel finds that Respondent has used the disputed domain name in bad faith.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To succeed on an allegation of Reverse Domain Name Hijacking a respondent must show that the complainant knew of respondent’s unassailable rights or legitimate interests in the domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
In view of the Panel’s finding that Complainant has proven each of the three elements set forth in paragraph 4(a) of the Policy the allegation of Reverse Domain Name Hijacking is dismissed.
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 <bigbrotherafrica.com> be transferred to Complainant.
Ross Carson
Sole Panelist
Date: March 11, 2013