WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sky International AG and Sky PLC v. GreenCape Media Limited
Case No. D2017-0354
1. The Parties
The Complainants are Sky International AG of Zürich, Switzerland and Sky PLC of Isleworth, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is GreenCape Media Limited of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <skybetbettingnews.com>, <skyvegasapp.com> and <skyvegasbettingnews.com> (“Disputed Domain Names”) are registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2017. On February 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same day, 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 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2017.
The Center appointed John Swinson as the sole Panel in this matter on March 29, 2017. 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 Complainants are Sky International AG (“Sky International”) and Sky Plc (“Sky”). The Complainants are related entities with Sky International based in Switzerland and Sky in the United Kingdom.
The Complainants and their affiliated companies are internationally recognised media businesses and providers of satellite television services. The Sky News channel has been in operation since 1989 and is available in more than 125 countries and to more than 90 million homes worldwide. The Complainants allocate a significant amount of money to sales, marketing and advertising in order to promote their business.
The Complainants own in excess of 3000 applications and registrations for the SKY and for SKY-formative trade marks. The Complainants have used “Sky” as part of a company name, as a trade mark and as a house mark extensively and continuously for over 25 years in the United Kingdom.
Of relevance to this case are the SKY, SKY NEWS, SKY BET and SKY VEGAS trade marks which are registered by each of the Complainants in their relevant jurisdiction and the SKY BETTING & GAMING trade mark which is registered by Sky in the United Kingdom (the “Trade Marks”). Evidence of these registrations has been provided as part of the Complaint. The Complainants currently license the use of numerous betting related trade marks to Sky Betting and Gaming, which is a related entity.
The Complainants own domain names which incorporate their Trade Marks including <sky.com>, <skysports.com>, <skynews.com> and <skybet.com>.
The Disputed Domain Names were registered on different dates with <skybetbettingnews.com> and <skyvegasbettingnews.com> created on January 8, 2014 and <skyvegasapp.com> on January 17, 2012. The Complainants applied to register the word marks of SKY BET and SKY VEGAS in both the United Kingdom and the European Union in 2011, pre-dating the Respondent’s registration of each of the Disputed Domain Names.
The website at one of the Disputed Domain Names, <skybetbettingnews.com>, (“Respondent Website”) shows that the Respondent has used a logo which is very similar to a registered trade mark of the Complainants (illustrated below).
Complainant’s registered trade mark
Logo included on the Respondent Website
In addition, the Respondent Website contains a betting form which is not dissimilar to what a genuine Sky Bet customer might expect to find at a legitimate Sky website. At the time of this decision, the Respondent Website was still live. There are no active websites associated with the Disputed Domain Names <skyvegasapp.com> and <skyvegasbettingnews.com>.
5. Parties’ Contentions
Identical or confusingly similar
The Complainants submit that each of the Disputed Domain Names are confusingly similar to their Trade Marks and highlight that each of the Disputed Domain Names fully comprises their SKY BET or SKY VEGAS trade mark. The Complainants acknowledge that the Disputed Domain Names contain additional descriptive words but submit that these do not reduce the confusing similarity to their well-known Trade Marks.
Rights or legitimate interests
With regard to whether the Respondent has any rights or legitimate interests in the Disputed Domain Names, the Complainants contend that the Respondent has no connection with the Complainants’ business or with the Disputed Domain Names to be able to demonstrate a bona fide connection for the offering of goods or services.
Registration and use in bad faith
In order to establish bad faith, the Complainants argue that the Respondent was aware of its brand and significant reputation and registered the Disputed Domain Names for the sole purpose of capitalising on the Complainants’ fame and goodwill.
It is also submitted that the Disputed Domain Names were registered to prevent the Complainants from reflecting their trade marks in corresponding domain names, presumably for the purpose of disrupting the business of the Complainant. It is also claimed that the Respondents’ motivation was commercial gain and that they sought to capitalise on the confusingly similar domain names to attract visitors to the Respondent Website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
Irrespective of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant.
A. Procedural Issues
No response from the Respondent
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Multiple complainants and disputed domain names
This Complaint is made on behalf of two Complainants in relation to three domain names. The Panel finds that it is procedurally efficient to consider the issues in the single Complaint given the companies are related and share a common grievance against the Respondent.
Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (Fulham Football Club (1987) Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc. / Official Tickets Ltd, WIPO Case No.
2009-0331). In this case the “common grievance” arises given the Complainants share ownership of trade marks which are registered in their respective jurisdictions and both Complainants are impacted in the same way by the actions of the Respondent.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
The Panel considers that the Disputed Domain Names are confusingly similar to the Trade Marks. Not only do the Disputed Domain Names incorporate one of the Trade Marks in entirety, two of the Disputed Domain Names also include other terms readily associated with the Complainants and their Trade Marks. It is the opinion of the Panel that this further exacerbates the confusingly similar nature of the Disputed Domain Names and is likely to mislead Internet users. For example, <skybetbettingnews.com>: this domain name incorporates SKY BET in entirety and causes additional confusion by including other wording that is confusingly similar to the SKY BETTING & GAMING, and SKY NEWS trade marks of the Complainant.
<skyvegasbettingnews.com>: This domain name incorporates SKY VEGAS in entirety and causes additional confusion by including other wording that is confusingly similar to the SKY BETTING & GAMING and SKY NEWS trade marks of the Complainant.
The Complainant is successful on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This decision has been reached after consideration of the following facts:
- The 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. Rather, the Respondent Website is highly misleading given its use of a logo that is confusingly similar to one registered by the Complainant. The website also contains what appears to be a betting form which is similar in appearance to what an Internet user would expect to find on one of the Complainants’ legitimate betting websites. The other Disputed Domain Names are inactive and evidently not being used in connection with a bona fide offering of goods or services.
- The Panel accepts that the Respondent’s use of the Disputed Domain Names is unauthorised and without permission from the Complainants.
- There is no evidence that the Respondent is, or has ever been, known by the Disputed Domain Names.
- There is no evidence to suggest the Respondent is making, or has ever made, any legitimate non-commercial use of the Disputed Domain Names.
- The Respondent, despite having the opportunity to present a defence, chose not to submit a Response.
Consequently, the Panel finds that the Complainants’ prima facie case has not been rebutted, and that the Respondent is found not to have any rights or legitimate interests in the Disputed Domain Names.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainants’ brand is very well-known internationally with a presence in more than 120 countries. The SKY trade mark has been used in the United Kingdom for more than 25 years and, as the business has expanded, additional trade marks have been added to the Complainants’ intellectual property portfolio.
The Complainants applied to register the SKY BET and SKY VEGAS trade marks in Europe and the United Kingdom in October 2011, pre-dating the registration of the Disputed Domain Names (between 2012 and 2014).
The Panel believes it is highly probable that the Respondent was aware of the Complainants when registering the Disputed Domain Names. As stated by the Panel in Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397, “since the Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when the Respondent registered the Domain Name, it was not aware that it was infringing on the Complainant’s trademark rights”.
While the Respondent has not filed a response, a brief visit to their website reveals that they are a marketing company self-described as an “international marketing agency that specialises in delivering relevant and quality online and mobile traffic in highly aggressive markets”. The website goes on to say that the agency focuses “on the most lucrative markets, particularly casinos, sports book and binary programs”.
The Respondent Website contains an electronic betting form which includes a logo that is remarkably similar to one used, and registered, by the Complainants. Given the Respondent is a marketing agency the Panel would expect the Respondent to have a sophisticated understanding of the commercial importance of a business’ brand and intellectual property rights, including trade marks.
The Panel finds it difficult to believe that the Respondent registered the Disputed Domain Names for any other reason than potential commercial benefit or to cause disruption to the Complainants.
For the reasons listed above, the Panel finds that the Complainants have succeeded on the third element 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 Names, <skybetbettingnews.com>, <skyvegasapp.com> and <skyvegasbettingnews.com>, be transferred to the first named Complainant, Sky International AG.
Date: April 11, 2017