WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star Television Productions Limited v. Rana Saqib Yameen
Case No. D2016-0514
1. The Parties
The Complainant is Star Television Productions Limited of Tortola, British Virgin Islands, Overseas Territory of the, United Kingdom, represented by Saikrishna & Associates, India.
The Respondent is Rana Saqib Yameen of RanaHost Kashmir Chowk, NoorPur Thal District, Khushab, Punjab Pakistan.
2. The Domain Name and Registrar
The disputed domain name <hotstar.club> 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 March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016.
The Respondent sent a number of brief emails to the Center. On March 22, 2016, the Center suspended the proceeding until April 21, 2016, at the request of the Complainant in order to facilitate a settlement of the matter. Following a further request by the Complainant, the proceedings were re-instituted as of April 2, 2016. The due date for the Response was extended to April 17, 2017. No formal Response was filed with the Center.
The Center appointed Adam Taylor as the sole panelist in this matter on April 29, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is part of the Star Group which has provided media and entertainment services in Asia since 1991. The Complainant currently broadcasts some 40 “Star” branded television channels in Asia, with some 720 million viewers per week.
Since January 2015, the Complainant has offered an Internet and mobile video platform for viewing content called “Hotstar” including via a website at “www.hotstar.com”. The platform has earnt some USD 32 million to date, having spent USD 29 million on marketing. For example, the platform garnered approximately 16 million viewers in December 2015. The official Facebook page for the platform has 1.2 million fans.
The Complainant owns a range of registered trade marks for HOTSTAR including European Union Trade Mark No. 013618053 filed January 2, 2015 and registered on May 4, 2015, in classes 9, 35, 38, 41 and 42.
The disputed domain name was registered on April 24, 2015.
As of August 4, 2015, the disputed domain name was used for a website streaming movies. Thereafter the website was suspended.
As of February 2, 2016, the disputed domain name was redirected to a website at “www.all4islam.com” including Islamic-related videos as well as assorted third party advertisements for a range of goods and services.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant’s marks are well known worldwide due to the popularity of the Complainant’s Hotstar platform as well as its Star television channels.
The disputed domain name is identical to the Complainant’s trade mark.
The Complainant has not licensed the Respondent to use its marks.
There is no evidence of use or an intention to use the disputed domain name for a bona fide offering of goods or services.
The films streamed on the Respondent’s website were clearly illegal, given their poor quality and the fact that the website was later suspended. The unlawful use of the disputed domain name is indicative of a lack of rights or legitimate interests. In any case the Respondent has attempted to profit from the goodwill and reputation of the Complainant.
The Respondent is not commonly known by the disputed domain name.
The disputed domain name has been registered and used in bad faith.
It is unlikely that the Respondent was unware of the Complainant, given its fame – particularly in the location of the Respondent.
The Respondent’s website hosts sponsored third party advertisements. This and the previous use to stream illegal films indicate that the Respondent registered and used the disputed domain name to profit from the goodwill and reputation of the Complainant.
Given the use of the disputed domain name for a website to stream films and host videos, Internet users are likely to be confused into thinking that the disputed domain name is connected with the Complainant.
The Respondent did not subsequently reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark HOTSTAR by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name.
The disputed domain name is identical to the Complainant’s trade mark, disregarding the generic Top-level Domain suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
Not only was the Complainant’s business well-established by the date of registration of the disputed domain name, the Respondent thereafter used the disputed domain name to offer movie-streaming, exactly the same services as the Complainant although there is no other obvious connection between the disputed domain name and the services.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a website offering services similar to the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <hotstar.club> be transferred to the Complainant.
Date: May 13, 2016