WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Sky Broadcasting Group Plc, Sky IP International Limited, Sky International AG v. Tarek Esmail
Case No. D2014-1792
1. The Parties
The Complainants are British Sky Broadcasting Group Plc of Middlesex, United Kingdom of Great Britain and Northern Ireland (United Kingdom), Sky IP International Limited of Middlesex, United Kingdom, and Sky International AG of Zug, Switzerland, represented by Clyde & Co LLP (Dubai), United Arab Emirates.
The Respondent is Tarek Esmail of Cairo, Al Qahirah, Egypt.
2. The Domain Name and Registrar
The disputed domain name <skynewsmisr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2014. On October 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2014, 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 the Complainants on October 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on October 21, 2014.
On October 16, 2014 and on October 21, 2014, following the submission of the amended Complaint, the Respondent submitted two informal email communications to the Center, whereby it alleged having a “press license” “issued from London”for using the disputed domain name. The second communication also contained a copy of the purported press license attached to it.
The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2014. On October 31, 2014, the Respondent indicated to the Center a different postal address for the delivery of the notification of the Complaint by courier. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2014. Although the Respondent sent the brief email communication mentioned above, it did not file a formal Response with the Center within this deadline.
On November 17, 2014, the Center informed the Parties that it will proceed with the appointment of the Panel as the due date for the Response had passed.
On November 18, 2014 the Respondent sent a further communication to the Center, whereby it reiterated its statements already made to the Center with its previous communications.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 27, 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.
On December 3, 2014, the Complainants made a supplemental submission to the Center, addressing the allegations of the Respondent, made with its communications to the Center dated October 16, 2014 and October 21, 2014, and the document attached to the latter of these communications.
On December 11, 2014, the Panel issued its Procedural Order No.1, whereby it decided to accept the Complainants’ supplemental submission, as it contained a response to allegations of the Respondent that the Complainants could not have expected. The Respondent was invited to file a reply to the Complainants’ supplemental filing with the Center no later than December 17, 2014. The due date for Decision was extended by the Panel to December 20, 2014.
The Respondent did not file any comments within the deadline fixed by the Panel. On December 20, 2014 the Respondent sent an email message to the Center in the following terms: “We have sent the documents which needed to let you to know we owned this domain and we have license for this domain from London”.This message by the Respondent was followed by several other messages to the Center, by which the Respondent reiterated its statements already made in the proceedings. With its message to the Center dated December 22, 2014, the Respondent stated: “[..] Please understand my situation and we can write on our web site, that’s this site is (sic) not belonged to Sky News International or any some else you need us to write on the website.”
The Panel has reviewed the statements made by the Respondent with its submissions to the Center in the period December 20, 2014 – December 22, 2014, and finds that they contain no new information or allegations, but only confirm what the Respondent had already stated in the proceedings. The Panel finds that each of the Parties has been provided with an adequate opportunity to present its case and proceeds with the issuance of the present decision.
4. Factual Background
The Complainants are part of the SKY group of companies. They are active in the media and television business. Their SKY NEWS television channel was first launched in the United Kingdom on February 5, 1989. They broadcast the international SKY NEWS television channel which is now available in at least 118 countries around the globe and reaches approximately 107 million households. The SKY NEWS ARABIA Arabic language television channel was launched by Sky News Arabia FZ LLC on May 6, 2012 and uses the SKY NEWS Marks under licence from the Complainants. This television channel is broadcast to 20 countries in the Middle East (including Egypt) and reaches approximately 50 million households.
The Complainants have rights in the trademarks SKY NEWS, SKY NEWS ARABIA and SKY NEWS عربية (“ARABIA” in Arabic) (collectively the “SKY NEWS trademark”), including in the following trademark registrations:
- The word trademark SKY NEWS with registration No. UK00001348023, registered on September 6, 1991 in the United Kingdom of Great Britain and Northern Ireland for services in International Class 38;
- The word trademark SKY NEWS with registration No. UK00001348024, registered on September 6, 1991 in the United Kingdom of Great Britain and Northern Ireland for services in International Classes 38 and 41;
- The word trademark SKY NEWS with registration No. EU000128181, registered on June 15, 1998 as a Community trademark for services in International Classes 09, 16, 38, 41 and 42;
- The word trademark SKY NEWS ARABIA with registration No. IR1089909, registered on January 12, 2011 as an International trademark, including for the territory of Egypt, for services in International Classes 9, 38 and 41;
- The word trademark SKY NEWS عربية (“Arabia” in Arabic) with registration No. IR1143632, registered on September 6, 2011 as an International trademark, including for the territory of Egypt, for services in International Classes 9, 38 and 41.
The Complainants own various domain names and websites incorporating the SKY NEWS trademark, including <skynews.com>, <sky.com>, <skynewsinternational.com> and <skynewsarabia.com>. The website at “www.news.sky.com” receives millions of daily views, and is ranked as the 32nd most popular website in the United Kingdom, and in the top 1000 websites globally.
The disputed domain name was registered on December 28, 2013.
5. Parties’ Contentions
The Complainants submit that the disputed domain name is identical or confusingly similar to the SKY NEWS trademarks. It incorporates the SKY NEWS trademark with the addition of the word “Misr”, which is an English transliteration of the colloquial Arabic language word for “Egypt”. The disputed domain name uses the word “Misr” as a geographical indicator targeted at people in Egypt. The addition of this element to the SKY NEWS trademark does not distinguish the disputed domain name from the Complainants’ trademarks. The addition of the word “Misr” as a geographical indicator also creates confusion with the SKY NEWS ARABIA and the SKY NEWS عربية (“Arabia” in Arabic) trademarks. Replacing the word “Arabia” with the Arabic word for Egypt (i.e. one of the countries falling into the linguistic and geographical category “Arabia”) is likely to create confusion and may lead members of the public into believing that the disputed domain name is related to the Complainants.
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and it is inconceivable that the Respondent was not fully aware of the reputation of the SKY NEWS trademark at the time of registration of the disputed domain name. The SKY NEWS trademark is well known in relation to the provision of news, so the Respondent has no justification for choosing the SKY NEWS trademark. The Complainants have not licensed or authorised the Respondent to use the SKY NEWS trademark, and have no relationship with the Respondent.
The Complainants further state that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s website features news articles which were published earlier by other Arabic news websites but does not mention the sources of these articles and does not specify that they are not original content. Some of these articles were originally published on a website called O News Agency or on the prominent Egyptian news website, Al Youm Al Sabe3. Both of these websites are news sources that compete with the SKY NEWS ARABIA website. The unauthorized reproduction of proprietary content without commentary indicates a lack of bona fide, legitimate or non-commercial or fair use of a disputed domain name. The Respondent’s website is primarily intended to generate revenue through pay-per-click advertising and contains banner commercial advertisements. Therefore, the Respondent is using the SKY NEWS trademark to attract Internet users to its website (which features competitors’ content) for the purpose of commercial gain though advertisements featured on the website.
The Complainants assert that the Respondent has registered and used the disputed domain name in bad faith. The SKY NEWS trademark is well known globally in relation to the provision of news through a range of media, including television and the Internet. Consequently, it is inconceivable that the Respondent was unaware of the Complainants’ operation under the SKY NEWS trademark when it registered the disputed domain name. The disputed domain name is being used to misleadingly divert consumers to the Respondent’s website, by creating the wrong impression that it is associated with the Complainants. The visual design of the Respondent’s website has a similar look and feel to the Complainants’ SKY NEWS websites, which is misleading potential online news consumers to believe that this website is connected with the Complainants. This was done in attempt to trade off the goodwill of the Complainants and the SKY NEWS trademark and to extract benefit from the Complainants’ established and highly regarded reputation in the news industry, by diverting online users to the Respondent’s website and generating profit for the Respondent through advertising.
With their supplemental submission the Complainants denied the allegations of the Respondent that it had been granted an official license by a relevant authority to operate within the press, media or journalism industry by using the disputed domain name, and stated that the document submitted by the Respondent in support of this allegation was irrelevant as it contained no reference to the Respondent or to the disputed domain name.
The Respondent did not submit a formal Response in this proceeding. Rather, it chose to explain its position by sending a number of informal email communications to the Center. By these emails, the Respondent repeatedly alleged having a “press license” “issued from London” for using the disputed domain name,and submitted an undated bilingual document in English and in Arabic, issued by a company called Birmingham for Media & Publications Limited, registered in the United Kingdom. This document is titled “Licence of (Newspaper/Magazine) Issuance”, and its English part contains the following statement (sic):
“Sky News Misr
Mr. Muhammad Ali Abu Talib Khalil
To be the owner of the (newspaper/magazine), the trade name and the privilege and no one has the right litigate him on the (newspaper/magazine) and the trade name, and no one has the right to cancel it. He has the full power to operate the (newspaper/magazine) and sign the contracts as for it. He has the right to issue bank accounts in the name of the (newspaper/magazine).
Accordingly, the aforesaid person (s) will be fully responsible for any legal and financial liabilities incurred as result of this licence.”
By its communication dated December 22, 2014, the Respondent offered to include a disclaimer on its website stating that the same is not related to the Complainants.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case, including an opportunity to respond to the supplemental submission of the Complainants.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
A. Identical or Confusingly Similar
The Complainants have provided evidence and have thus established their trademark rights in the SKY NEWS trademark.
The Panel notes that there is a common practice under the Policy to ordinarily disregard in appropriate circumstances the generic Top-Level Domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name that has to be analysed is its “skynewsmisr” section, which is a combination of the elements “sky”, “news” and “misr”. The first two of these elements coincide with the Complainants’ SKY NEWS trademarks and with the distinctive part of the SKY NEWS ARABIA trademarks. As contended by the Complainants, the “misr” element means “Egypt” in Arabic, and Egypt is the most populous Arabic country. As that the Complainant’s SKY NEWS trademark has achieved global popularity in the field of news television, the Panel finds it likely that Internet users would regard the disputed domain name as related to the Complainant’s news services for the Egyptian audience, and additional argument for which is the existence and popularity of the Complainants’ SKY NEWS ARABIA television and online news service.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the SKY NEWS trademark in which the Complainants have rights, and the Complainants have established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Complainants are required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainants make such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainants to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainants have contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that they have neither authorized nor licensed it to use the SKY NEWS trademark, that the Respondent has never used or prepared to use the disputed domain name for a bona fide offering of goods or services, but has linked it to a website containing advertising where articles taken from other websites are reproduced with removed references to the original sources and authors. Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any arguments in its defense other than the allegations that it has a “press licence” “issued from London”, supported by the submission of the document described in Section 5 B above. As discussed there, the “press license” submitted by the Respondent states that it is issued by “Birmingham for Media & Publications Limited”. As contended by the Complainant, this entity is a dormant private limited company incorporated in the UK in 2011 whose business is described as “other business support service activities not elsewhere classified”. The document states that it is issued to an individual named “Mr. Muhammad Ali Abu Talib Khalil” and contains no references to the Respondent or to the disputed domain name. Therefore, the Panel does not find how this document could establish any rights or legitimate interests of the Respondent in the disputed domain name.
The disputed domain name is confusingly similar to the SKY NEWS trademark of the Complainants and is linked to a website containing news articles. This combination has a strong potential to cause confusion in Internet users given that the Complainant broadcasts a popular television channel in Arabic under the name SKY NEWS ARABIA and is active in Egypt. In view of this, it is highly likely that that the Respondent was well aware of the Complainant and its goodwill at the time of the registration of the disputed domain name and that its registration was made specifically with the Complainant and its popularity in mind. In addition, the Respondent has not denied that its website contains advertising banners of third parties and publishes articles taken for other sources, including competitors of the Complainant, without mentioning the sources of these articles. In the Panel’s view, such conduct of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant’s case has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As contended by the Complainants, the SKY NEWS trademark has gained strong worldwide reputation in relation to television as a result of the efforts of the Complainant, and the Complainants’ SKY NEWS ARABIA news channel is popular in the Arabic world, including in Egypt, where the Respondent is located. The disputed domain name is confusingly similar to the SKY NEWS trademark and was registered without the consent of the Complainant, and the Respondent has failed to show any rights or legitimate interests to register it. In these circumstances, the Panel is satisfied that the disputed domain name was registered in view of the popularity of the Complainants’ news services and the attractiveness of the disputed domain name for Internet users looking for the Complainants’ news services for the Arabic world. Therefore, the Panel accepts that the disputed domain name was registered in bad faith.
The disputed domain name is linked to a news website containing third party advertisiments. As contended by the Complainants and undisputed by the Respondent, this websites reproduces news articles taken from competitors of the Complainant without mentioning the sources. The Panel does not regard such conduct as being made in good faith. Rather, it appears that the Respondent, by using the disputed domain name, is pirating Complainant’s goodwill and consumer recognition for its own financial gain by capitalizing on consumers looking for the news services offered by the Complainants by creating a likelihood of confusion with the Complainants’ SKY NEWS trademark as to the source or affiliation of its website.
Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <skynewsmisr.com> be transferred to the Complainant.
Date: December 26, 2014