WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sky International AG and British Sky Broadcasting Group Plc v. Chodhry Umar Hayat Sandha (MFCGB)

Case No. D2014-0097

1. The Parties

Complainants are Sky International AG of Zug, Switzerland and British Sky Broadcasting Group Plc of Middlesex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented internally.

Respondent is Chodhry Umar Hayat Sandha (MFCGB) of London, UK, represented by Talib H Mirza, eChromatics Communication Arts, Lahore, Pakistan.

2. The Domain Names and Registrar

The Disputed Domain Names <skynewsagency.com>, <skynewsagencypakistan.com>, <skynewspakistan.com> and <skynewsurduservice.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint for the Disputed Domain Names <skynewspakistan.com> and <skynewsurduservice.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2014. On January 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names <skynewspakistan.com> and <skynewsurduservice.com>. On January 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On January 29, 2014, Complainants requested addition of the Disputed Domain Names <skynewsagency.com> and <skynewsagencypakistan.com> to the present administrative proceeding. On January 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names <skynewsagency.com> and <skynewsagencypakistan.com>. On January 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2014. The Center received email communications from Respondent on February 15, 21, 22 and 28, 2014. The Center informed the parties about the commencement of panel appointment process on February 24, 2014.

The Center appointed Michael A. Albert as the sole panelist in this matter on April 2, 2014. 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

Complainants own numerous trademark registrations in the European Community for their SKY NEWS trademark.

Complainants obtained their first registrations (Trademark No. 1348023 and No. 1348024) for the trademark SKY NEWS with respect to broadcasting and transmission of radio and television news programs and with respect to television and radio news services on September 6, 1991. Complainants subsequently obtained four registrations (Trademark No. 2070535, No. 2314526, No. 2443401, and No. 2527502) with respect to recorded programs for television and radio, television and radio broadcasting, the transmission of radio and television programs, and telecommunications services.

Complainants obtained their first European Community (CTM) Trademark for SKY NEWS (CTM Trademark No. 128181) on June 15, 1998 with respect to the production of television, radio and films. Complainants subsequently obtained additional CTM registrations for SKY NEWS (CTM Trademark No. 5673405, No. 5673413 and No. 9049974) with respect to telecommunication and new agency services.

Lastly, Complainants also own registered Pakistan Trademark SKY NEWS No. 212746 with respect to entertainment.

These SKY NEWS registrations in the United Kingdom, Pakistan and the European Community will be referred to collectively as “SKY NEWS Marks.”

According to Complainants’ undisputed allegations, Complainants own a large number of domain name registrations which include the SKY NEWS trademark, including <skynews.com> (or “www.news.sky.com) > registered on March 21, 2007. Complainants’ “www.news.sky.com” website received over 609 million daily visits in the United Kingdom from January 1, 2005 to July 1, 2013. Complainants also stream their news content live in various countries throughout the world via “www.skynewsinternational.com”.

Respondent, Chodhry Umar Hayat Sandha, registered <skynewspakistan.com>, Disputed Domain Name (1), on September 18, 2009 and subsequently registered <skynewsurduservice.com>, Disputed Domain Name (2), on December 27, 2010.

In addition, Respondent registered <skynewsagency.com> and <skynewsagencypakistan.com>, Disputed Domain Names (3) and (4), respectively, on January 24, 2014.

5. Parties’ Contentions

A. Complainants

Complainants contend that their SKY NEWS brand is a well-known and established business of broadcasting and satellite television services in the United Kingdom and throughout the world, to which it has devoted millions of pounds in marketing, advertising, and promoting its business primarily under the SKY trademark. The Sky News Television channel was first launched in the United Kingdom on February 5, 1989. Complainants contend they have made exclusive and continuous use of the SKY NEWS trademark from this launch date, over 25 years ago. As of June 2013, SKY NEWS subscribers totaled over 10 million in the United Kingdom and Ireland. Complainants also contend that the SKY NEWS Television channel is distributed throughout Europe, Asia, Africa, and New Zealand, in addition to Complainants’ licensing of both the “SKY” and “SKY NEWS” brand throughout the world, including throughout the European Union, India, Pakistan, and the United States.

Complainants contend that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and is using the Disputed Domain Names in bad faith.

Complainants contend that the Disputed Domain Names are confusingly similar to Complainants’ SKY NEWS marks. Complainants observe that all Disputed Domain Names fully incorporate the SKY NEWS trademark. In reference to Disputed Domain Name (1), Complainants observe that the only difference between Complainants’ SKY NEWS mark and the Disputed Domain Name is the addition of the country Pakistan and the generic Top-Level Domain (“gTLD”) “.com”. In reference to Disputed Domain Name (2), Complainants observe that the only difference between Complainants’ SKY NEWS mark and the Disputed Domain Name is the addition of the reference to the Urdu language and the gTLD “.com”. In reference to Disputed Domain Name (3), Complainants observe that the only difference between Complainants’ SKY NEWS mark and the Disputed Domain Name is the addition of the word “agency” and the gTLD reference “.com”. Lastly, in reference to Disputed Domain Name (4), Complainants observe that the only difference between Complainants’ SKY NEWS mark and the Disputed Domain Name is the addition of the word “agency,” the country Pakistan, and the gTLD “.com”. Complainants contend that the full incorporation of Complainants’ SKY NEWS mark and the generic additions are sufficient to establish a confusing similarity for purposes of the Policy.

Complainants argue that Respondent cannot demonstrate any right or legitimate interest in the Disputed Domain Names under Paragraph 4(a)(ii) of the Policy. Complainants contend that Respondent has not used or made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the Disputed Domain Names. Complainants have presented evidence that Respondent is using the Disputed Domain Names in connection with websites that display Complainants’ logos and trademarks. In addition, Complainants have presented evidence that the content and links available on the website associated with Disputed Domain Name (2) appear to originate from one of Complainants’ main competitors, BBC News. Complainants further contend that Disputed Domain Names (1) and (2) claim association with SKY NEWS, but fail to provide any legitimate or contactable news service.

Lastly, Complainants contend that the Disputed Domain Names were registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy. Specifically, Complainants contend that Respondent’s use of the Disputed Domain Names is an attempt to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Further, Complainants maintain that the Disputed Domain Names have been registered to prevent Complainants from reflecting their trademarks in a corresponding domain name. In particular, Complainants point to the registration of Disputed Domain Names (3) and (4) after the original filing of the Complaint on January 22, 2014, as an indication of registration and use by Respondent in bad faith. Further, Complainants note the registration of several other domain names by Respondent that incorporate third party trademarks as an illustration of a pattern of Respondent’s alleged cybersquatting activity.

B. Respondent

In its email communications on February 22, 2014, Respondent expressly referred to itself as SKY NEWS Agency in its response and stated it is registered with IPO Pakistan. Respondent provided no documentation in support of this allegation. Further, Respondent alleged that Complainants are an India-based travel agency, constituting a different class and services than Respondent. Respondent did not provide any documentation in support of this allegation. Respondent did not address Complainants’ contentions, but rather requested that the Disputed Domain Names be moved back to their prior status and inquired as to the avenues of compensation Respondent could seek against Complainants.

6. Discussion and Findings

A. Preliminary Procedural Issue

On January 29, 2014, Complainants filed an Amended Complaint adding the Disputed Domain Names <skynewsagency.com> and <skynewsagencypakistan.com> to the present administrative proceeding. The Panel elects to accept and consider the Amended Complaint since it was submitted shortly after the original complaint was filed and as soon as Complainant became aware of the adittional disputed domain names, and was submitted prior to Respondent receiving notification of the commencement of the proceedings. Therefore, Respondent had a fair opportunity to respond to the Amended Complaint. EAuto, Inc. v. E Auto Parts, Inc., WIPO Case No. D2000-0121; EAuto, Inc. v. Available-Domain-Names.com d/b/a Intellectual-Assets.com, Inc., WIPO Case No. D2000-0120.

B. Analysis of Domain Names

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

1. Identical or Confusingly Similar

Complainants provide sufficient evidence that they are the owners of the SKY NEWS Marks. However, the Disputed Domain Names and Complainants’ SKY NEWS Marks are not identical. Thus, the issue is whether they are confusingly similar.

The Disputed Domain Names combine three elements: (1) Complainants’ SKY NEWS Marks; (2) the suffixes “pakistan”, “urduservice”, “agency”, and “agencypakistan”; and, (3) the suffix “.com.” The relevant comparison to be made is normally with the second-level portion of the domain name only (i.e., “skynewspakistan”, “skynewsurduservice”, “skynewsagency”, or “skynewsagencypakistan”), as it is well-established that the generic Top-Level Domain (i.e., “.com”) should ordinarily be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR). Here, all Disputed Domain Names incorporate the SKY NEWS Mark.

Moreover, the addition of the word “pakistan” does not mitigate the confusing similarity between the Disputed Domain Names and Complainants’ marks, since the additional term is a geographic descriptor. See e.g., Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding Respondent’s domain names involving Complainant’s mark with the addition of a geographic descriptor confusingly similar to Complainant’s mark); Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628 (finding the Respondent’s domain name <wal-mark-europe.com> confusingly similar to Complainant’s internationally registered mark WAL-MART).

Similarly, the addition of the generic or descriptive terms or phrases “urduservice” or “agency” or “agencypakistan” as suffixes to the SKY NEWS Mark does not mitigate the confusing similarity between the Disputed Domain Names and Complainants’ marks. See e.g., Hachette Filipacchi Presse v. Full Access Sàrl, WIPO Case No. DCH2012-0023 (finding the addition of “agency” in the disputed domain name <elle-agency.ch> insufficient to distinguish the domain name from the trademark ELLE); Experian Information Solutions, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0367 (finding that the addition of the generic term “automotive” in the disputed domain name, <experianautomotive>, did not distinguish Respondent’s domain name from Complainant’s mark EXPERIAN).

Lastly, the addition of the phrases “agency” or “urduservice” as suffixes to the SKY NEWS Mark does not mitigate the confusing similarity between the Disputed Domain Names and Complainants’ Marks. The addition of these terms merely describes Complainants’ services as an international source of news and does nothing to dispel the confusing similarity between the Disputed Domain Names and Complainants’ SKY NEWS Marks. Indeed, because the words “agency” and “urduservice” are associated with Complainants and their news business, the suffixes strengthen rather than weaken the confusing similarity. See e.g., The American Automobile Association Inc. v. InsuranceExpress.com Inc., Gene Graceffo, WIPO Case No. D2010-0196 (finding <aaaautoinsurance.com> confusingly similar to AAA, which offered insurance services); EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288 (finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to EARTHLINK, which offered Internet services).

For all of the foregoing reasons, this Panel finds that the Disputed Domain Names are confusingly similar to Complainants’ SKY NEWS Marks, in which Complainants have established rights. Therefore, the Panel finds that Complainants have proven the first element of the Policy.

2. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Complainants contend that Respondent has no rights in the SKY NEWS Marks, is not commonly known by the Disputed Domain Names, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Names.

As evidenced by Complainants’ numerous trademark registrations and licenses throughout the world, Complainants have established rights in the SKY NEWS Marks. Moreover, Complainants have alleged, and Respondent has not denied, that Respondent is not commonly known by the Disputed Domain Names.

In addition, Complainants have supported their contention that Respondent is using the Disputed Domain Names with an intent to trade off Complainants’ goodwill. Specifically, Complainants have provided evidence that Respondent has used the Disputed Domain Names in connection with websites that directly display Complainants’ registered SKY NEWS Marks.

For all of the foregoing reasons, this Panel finds that Complainants have proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Names. Therefore, the Panel finds that Complainants have proven the second element of the Policy.

3. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the Respondent’s website.

Registered in Bad Faith

The Panel finds that Respondent likely knew of Complainants’ marks when it registered the Disputed Domain Names given that Complainants have used the SKY NEWS marks in connection with news and media services for approximately 23 years throughout the United Kingdom, Europe and the world. See Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (“[S]ince Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights.”).

Based upon the foregoing circumstantial evidence, the Panel finds that Respondent registered the Disputed Domain Names in bad faith.

Used in Bad Faith

The Panel also finds that Respondent used the Disputed Domain Names in bad faith.

It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.

Here, Complainants have demonstrated that Respondent has used Complainants’ SKY NEWS Mark in Disputed Domain Name (2), <skynewsurduservice.com>, and on the corresponding website to offer the news content of Complainants’ competitors, BBC News. Respondent’s website clearly and prominently displays the words comprising Complainants’ SKY NEWS Mark. The website does not contain any disclaimer regarding its (lack of) association with Complainants. Further, it displays apparently the exact content displayed on BBC’s Urdu news page. The use of Complainants’ SKY NEWS Mark in association with the content, goods or services of their competitor constitutes evidence of bad faith. See Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren, WIPO No. DNL2013-0026 (finding that incorporation of the Complainant’s trademark in the Domain Name of the Respondent’s website, which offered the goods of competitors of the Complainant, created a likelihood of confusion with the Complainant’s Trademark and constituted evidence of bad faith).

In addition, Respondent appears to have intended to use the Disputed Domain Names to promote its own news services based upon the confusing similarity between Complainants’ SKY NEWS Marks and Respondent’s <skynewsagency.com>, <skynewsagencypakistan.com>, <skynewspakistan.com>, and <skynewsurduservice.com> websites, which also displayed Complainants’ SKY NEWS Marks but which now seems to have been suspended.

For all of the foregoing reasons, the Panel finds that Complainants have proven that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel finds that Complainants have proven the third and final element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <skynewsagency.com>, <skynewsagencypakistan.com>, <skynewspakistan.com>, and <skynewsurduservice.com>, be transferred to Complainants.

Michael A. Albert
Sole Panelist
Date: April 15, 2014