WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
fashiontv.com GmbH v. WhoIs Agent, WhoIs Privacy Protection Service, Inc. / Caterbridge Managment LTD / Evening Star Holdings Ltd.
Case No. D2018-0878
1. The Parties
Complainant is fashiontv.com GmbH of Munich, Germany, represented by Mitscherlich & Partner, Germany.
Respondent is WhoIs Agent, WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Caterbridge Managment LTD of Larnaca, Cyprus / Evening Star Holdings Ltd. of Nicosia, Cyprus, represented by Lansky, Ganzger & Partner Rechtsanwälte GmbH, Austria.
2. The Domain Name and Registrar
The disputed domain name <betfashiontv.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2018, 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 April 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 24, 2018.
3.2 The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. The Complainant submitted a request for suspension to the Center on May 23, 2018, which was granted the same day. The suspension due date was set to June 22, 2018. On June 21, 2018, the Complainant requested to reinstitute the proceeding, and the proceeding was subsequently reinstituted on June 22, 2018, with the new response due date set to June 27, 2018. The Respondent submitted a request to the Center on June 22, 2018, to extend the response due date. The Center granted the extension on June 25, 2018, and the new response due date was set to July 1, 2018. The Center received various email communications from the Parties during the period between April 29, 2018, and July 16, 2018, including a supplemental filing by Complainant of July 4 and 16, 2018 and of Respondent of July 13, 2018. The Response was filed with the Center on June 29, 2018.
3.3 The Center appointed David H. Bernstein, Andrea Mondini, and Ron Klagsbald as panelists in this matter on August 13, 2018. The Panel finds that it was properly constituted. Each member of 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.
3.4 Neither of the two named Respondents, WhoIs Agent, or Caterbridge Managment LTD, answered the Complaint. The only entity to serve a response was Evening Star Limited Holdings (hereinafter, “Evening Star”), which claimed that Respondent Caterbridge Managment LTD (hereinafter “Caterbridge”) was holding the domain name registration as its escrow agent.
3.5 On August 23, 2018, the Panel issued a Procedural Order requesting supplemental submissions from the parties. The Panel asked the parties to address two issues. First, the Panel asked the parties to address whether Evening Star’s submission should be considered since it was not a listed Respondent. Second, the Panel asked the parties to address whether the Panel has jurisdiction to hear this matter given that the parties cited a contract that contained a dispute resolution clause, and it was not clear to the Panel whether that contract required this dispute to be heard in a different forum. In particular, under Section 7 of the contract between FTV Ltd. (Complainant’s affiliate) and Evening Star, any dispute related to that contract was required first to be addressed through negotiation and then mediation. In addition, under Section 15 of the contract, any dispute was to be heard exclusively in the Austrian courts located in Vienna. The parties were given until September 5, 2018 to file supplemental briefs and until September 14, 2018 to file reply briefs.
3.6 Each party submitted a supplemental submission and each submitted a reply. In light of the complexity of the procedural and substantive issues in this matter, the Panel thereafter set October 12, 2018 as the expected decision date.
4. Factual Background
4.1 Complainant, fashiontv.com GmbH (hereinafter, “Complainant”), is the holder of international trademark registration No. 1257660 in F FASHIONTV and design. It was registered on March 20, 2015, and grants protection in the territories of Norway, Curaçao, the United States, Switzerland and Liechtenstein. Complainant also holds the German trademark registration No. 302015-000980 in F FASHIONTV, registered on March 31, 2015. Respondent does not contest these rights.
4.2 Both registrations cover class 41 services, meaning “services in the field of education and entertainment” including “online gambling services”. Respondent does not contest these rights.
4.3 Complainant acts as an IP holding company of the FashionTV Group, a company that distributes television programing in many countries via a channel named “Fashion TV” or “FTV”. The company also maintains an Internet presence at “www.fashiontv.com”. Its logo – an “f” inside of a diamond – appears on that website and was used in connection with FTV’s web postings since at least November 2013.
4.4 In February 2014, Complainant’s affiliate (hereinafter “FTV Ltd.” or “FTV”) entered into a contractual agreement with Evening Star, a company operating in the online gambling space. Pursuant to the contract, the parties agreed to jointly create a new entity named “Fashion TV Gaming Group” or “FTVGG”, which would offer online gambling services with FTV’s branding.
4.5 The contract also provided that FTV or its affiliates had registered and owned certain domain names (including <fashiontvcasino.com>, <ftvcasino.net>, <fashiontvcasino.net>, <casinoftv.net>, and <casino.tv>), and that FTV “shall register per the request of Evening [S]tar and or FTVGG on FTVGG’s account any other casino related domains as may be requested associated with the FTV brand or that demonstrates the FTV associated star trademark . . . at any requested suffixes.” Section 3.1.1 of the contract. The contract thereafter defined as the “Domain(s)” the previously owned and registered domain names along with “any other casino related domain” that “may be requested associated with the FTV brand” and that FTV thereafter registers pursuant to any such request. Id. (emphasis added).
4.6 The contract clarified that “any and all domains associated with any online gaming casino activity associated with the FTV brand or that demonstrates the FTV associated trademark . . . in conjunction with the on line casino gaming activities . . . shall be subject to this Agreement, with exclusivity to use such Domains being granted to FTVGG.” Each domain name already registered or that was subsequently registered was to be deposited with an agreed-upon escrow agent (which, the Panel notes, was not Caterbridge). Id. (emphasis added).
4.7 Section 6.1 of the contract further provided that “The Fashiontv Casino may be only hosted under the Domain(s). Use of any other domain name requires the approval of FTV. For any domain name related to FTVcasino not registered under FTV on the date of execution of this Agreement, FTVGG will inform FTV and FTV shall register such domain, on a worldwide basis, provided that use of such newly registered domain shall be governed by the terms of this Agreement. FTVGG shall have the right to use the domain for the duration of this agreement. FTVGG shall bear the sole responsibility for all of its activities relating to the operation of the FashionTV Online Casino, under the Domain.” Id. (emphasis added).
4.8 The contract stated that depositing the domain names with the agreed-upon escrow agent was required “[i]n order to ensure the on-going availability of the FTV intellectual property. . . .” It further noted that the escrow agent was to be entrusted with the previously registered and owned domain names listed in the contract, “and any FTV casino related Domains, whether such domain [name] exists on date of execution of this Agreement or at any time in the future.” Id., Section 3.3.1.
4.9 The contract also contained a license whereby FTV granted FTVGG “an exclusive worldwide license . . . to establish, operate and control the Fashion TV casino under the Domain(s), and in connection therewith to use, the FTV trademark and additional content relating to online casino activities and that are the result of the operation herein. . . .” Id., Section 3.1.2.
4.10 The contract also provided that the “[o]ngoing management of FTVGG” was to be “executed by Evening Star.” Id. at Section 2.4.
4.11 On or about October 9, 2015, FTV informed Evening Star that it believed the contract had been breached and was no longer in effect. Evening Star disputes that the contract was terminated, and instead argues that it remains in effect because it continued to perform despite FTV Ltd.’s failure to perform under the contract. Neither FTV Ltd., Evening Star, nor Complainant has filed a law suit with the Viennese courts alleging breach of the contract or trademark infringement. There also is no evidence that any entity complied with the dispute resolution provisions found in Section 7 of the contract between FTV Ltd. and Evening Star.
4.12 The disputed domain name, <betfashiontv.com>, is not currently held by Evening Star or FTVGG, but instead is currently held by Caterbridge Managment LTD of Larnaca – a party who provided a letter confirming that it “acts as an Escrow agent for [Evening Star] in holding for you www.betfashiontv.com domain, since its registration.” The disputed domain name was registered in June of 2016, though it remains unclear whether Evening Star registered and transferred the domain to Caterbridge or whether Caterbridge registered and held the domain name at Evening Star’s direction.
4.13 Evening Star claims to have registered the disputed domain name on its own after FTV failed to transfer domain names to the agreed-upon escrow agent and failed to pay the proper escrow agency fees, both of which were requirements of the contract between the parties.
4.14 A copyright notice at the bottom of the website to which the <betfashiontv.com> domain name resolves states, in part, “Betfashiontv.com is a brand owned by Fashion TV Gaming Group”.
4.15 The website to which the <betfashiontv.com> domain name resolves uses the diamond-f branding and logo that FTV has trademarked, and makes many references to FTV including, for example, references to “Fashion Vodka.” Complainant states that it has licensed the distribution of alcoholic and non-alcoholic beverages to a third company. The website to which <betfashiontv.com> resolves also has a section of its website referring to luxury rentals that displays what appear to be bottles of vodka with the diamond-f branding.
4.16 At least some visitors to <betfashiontv.com> appear to believe it is associated with FTV, given comments submitted to the website.
4.17 Both Fashion TV Ltd. (a division of the same group that owns Complainant) and Respondent appear to remain shareholders of FTVGG.
5. Parties’ Contentions
5.1 Complainant contends that a response from Evening Star is improper because the UDRP Rules prohibit anyone but the holder of a disputed domain name from answering as a Respondent.
5.2 Complainant contends that Respondent has no rights in the disputed domain name.
5.3 Complainant further alleges that Evening Star has no right to register or use any FTV domain names or marks under the contract between FTV and Evening Star, and that it was not the recipient of any license permitting it to do so.
5.4 Complainant further alleges that the website to which <betfashiontv.com> resolves uses its trademarks in an unauthorized manner in several ways, including:
5.4(a) Complainant’s registered trademark – the diamond-f logo – and “fashion tv” appear on the website in numerous places and in numerous ways.
5.4(b) The text of the URL “www.betfashiontv.com” is allegedly confusingly similar to Complainant’s own URL, “www.fashiontv.com”.
5.5 Complainant further alleges that, even if there were a license that allowed FTVGG to use its trademarks or a domain name using “FTV” for the purposes of Internet gambling, that license is no longer in effect because FTV allegedly cancelled the contract in October of 2015 following customer complaints pertaining to <betFTV.com>.
5.5(a) Complainant argues that whether the contract was validly and properly terminated is irrelevant here because the contract does not list the disputed domain name <betfashiontv.com> as one of the domain names governed by the license and, in any event, the disputed domain name was registered only after the contract was terminated.
5.6 Complainant argues that the use of “bet” in front of “fashiontv” in the disputed domain name is a purely descriptive use and that it cannot serve to distinguish the disputed domain name from Complainant’s domain name <fashiontv.com>. It argues that “FashionTV” constitutes the dominant part of the disputed domain name, and that when a disputed domain consists of a dominant element of Complainant’s trademark and descriptive term, a relevant part of the public will assume that the disputed domain name was authorized by Complainant.
5.7 Complainant further alleges that its trademark registrations cover class 41 services, which include entertainment services such as online gambling. As such, it argues that the disputed domain name uses “FashionTV” for online gambling purposes and infringes its marks.
5.8 Complainant also cites examples of actual confusion in the record, whereby persons attribute <betfashiontv.com> to Complainant.
5.9 Complainant argues that all of this illustrates that Respondent has no rights or legitimate interest in the disputed domain name because it is not authorized to use FTV’s marks.
5.10 Complainant also argues that the domain name was registered and is being used in bad faith because it was registered after the contract was allegedly cancelled and because FTVGG and/or Respondent continue to use FTV’s marks for commercial gain by creating a likelihood of confusion and association with FTV.
5.10(a) On this point, it argues that FTVGG was a prior licensee and thus is fully aware of the similarity between (identical nature) its use of FashionTV and FTV’s marks and other domain names and its own.
5.10(b) Complainant further argues that FTVGG should have changed its corporate name once the license was revoked and that failure to do so is further likely to confuse and evidences bad faith.
5.11 Complainant alleges that the web layout of “www.betfashiontv.com” is confusingly similar to Complainant’s own webpage.
5.12 Complainant also contends that Respondent’s allusion to Complainant’s vodka distribution contract (by showing bottles of vodka with the diamond-f logo on them) is an improper use of Complainant’s marks for Respondent’s own gain.
5.13 Finally, Complainant alleges that several casino review websites have received complaints about <betfashiontv.com> and that those complaints have harmed its brand.
5.14 Evening Star alleges that it is the proper Respondent in this action. It claims to be the owner and beneficial registrant of the disputed domain name.
5.15 Evening Star claims that Whois Privacy Protection Service, Inc. is “only the registrar of the disputed domain name” and that the “underlying beneficial registrant [of the disputed domain name] is someone else, but not [FTVGG], since this is the joint venture the Complainant and Respondent agreed on to establish together.” It further claims that Caterbridge is merely Evening Star’s escrow agent, holding the disputed domain name for its beneficial ownership. Accordingly, Evening Star claims to be the “holder of [the] domain-name registration against which [this] complaint is initiated . . . [because Evening Star] is the beneficial underlying company and therefore the [proper] Respondent.”
5.16 Respondent does not contest that Complainant has rights in “FashionTV” or the associated logo, but argues that the class that covers “services in the field of education and entertainment” (class 41) is narrowed “by the addition ‘musical, singing, theater and dancing performances, live and via media’ only separated by a comma and not a semicolon.” It argues this means that Complainant’s rights do not clearly cover online gambling.
5.17 Respondent argues that it received an exclusive license from FTV granting it global rights to use the brand “Fashion TV” for all online gaming activities. The contract with FTV established FTVGG whose main objective was the operation of an online gambling website under the FTV brand.
5.18 Respondent argues that the contract was never properly cancelled, that it in fact remains valid and binding, and that, despite numerous communications back and forth and FTV’s lack of cooperation, it has continued to perform the contract to the best of its abilities.
5.19 Respondent also argues that FTV has breached the contract and that Evening Star has threatened law suits, but that no action was ever taken. In particular, Respondent alleges that FTV failed to transfer the domain names that it owned and registered (and that were listed in Section 3 of the contract) to the agreed-upon escrow agent (thereby frustrating Evening Star’s and FTVGG’s ability to perform), and that FTV also failed to pay escrow fees.
5.20 As such, Respondent argues that it was forced to obtain the <betfashiontv.com> domain name in order to continue performing the contract. It claims that it placed the domain name in the care of a different escrow agent because the contractually agreed upon agent could no longer be used.
5.21 As for customer complaints, Respondent argues that it is well known that online gaming operators are often confronted with complaints from players and that many are filed with ulterior motives.
5.22 Respondent alleges that Complainant has previously entered into other licensing contracts and subsequently tried to terminate them without good reasons in attempts to double sell their IP rights.
5.23 Respondent argues that <betfashiontv.com> has not been registered or used in bad faith because it was registered and is being used pursuant to a valid license.
6. Discussion and Findings
6.1 To succeed in these proceedings Complainant must establish the following three elements, by a preponderance of the evidence:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.1(a) Before addressing the procedural and substantive issues in this case, the Panel first addresses the many claims made by the parties about contractual breaches. This proceeding does not provide the parties with a forum to litigate their various disputes related to the contract, or to the display of the mark on vodka, or to the parties’ corporate names. Rather, this proceeding is a narrow one, limited to the question of whether Respondent’s registration of the domain name at issue was abusive and constitutes cybersquatting. Although the underlying facts are complex and the procedural issues convoluted, it is the Panel’s obligation to review the record presented and make the best ruling it can based on the record on the three factors listed above.
A. Procedural Rulings
6.2 Complainant essentially asks the Panel to disregard Evening Star’s Response on the ground that Evening Star is not the proper Respondent in this case. The Panel disagrees. Although the party listed as the registrant in the Whois information was Whois Privacy Protection Service, Inc., that entity is clearly a privacy service deployed to mask the identity of the actual beneficial owner. The use of such a privacy service may impact the analysis of Respondent’s bad faith, see, e.g., Advance Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, it does not prevent the Panel from considering the potential rights or legitimate interests, and good or bad faith, of the actual beneficial owner.
6.2(a) As is often the case, upon receipt of the Registrar Verification, the Registrar lifted the privacy shield and disclosed that the actual registrant was Caterbridge Management Ltd.. Evening Star has certified that Caterbridge is an escrow agent holding the domain name for its benefit; Caterbridge has submitted a letter confirming that arrangement. Annex R11. As such, the Panel holds that Evening Star, as the ultimate beneficial owner of the domain name, is a proper Respondent. The Panel therefore agrees to consider its arguments in defense of Complainant’s claims.
6.3 As noted above, the Panel also considered whether the contract referenced by both parties in their submissions divests this Panel of jurisdiction given the dispute resolution clause that requires any dispute to first be addressed through a negotiation and mediation process, and then requires resolution exclusively in the Austrian courts. Ultimately, the Panel agrees with Complainant that the Panel has jurisdiction to address the cybersquatting allegations raised in the Complaint since Complainant here is not a party to the contract at issue. Although Complainant is the IP holding company of Fashion TV Ltd. (see paragraph 14 of the Amended Complaint), who was a party to the contract with Evening Star, Complainant is a different legal entity that is not a party to the contract and, as such, it is not bound by either Sections 7 or 15 of the contract.
(a) The Panel is cognizant that the contract between Fashion TV Ltd. and Evening Star (to which Complainant is not a party) is largely a contract about licensing Fashion TV IP and trademarks, and that it seems a bit contradictory to allow Complainant’s affiliate to agree to certain terms and choice of law provisions pertaining to its IP licenses but to not hold its IP holding company to them. Nevertheless, Respondent has provided no legal arguments or support in this regard. Moreover, this Panel is ill-suited to resolve the parties’ conflict claims about whether the contract was terminated, and how the contract should be interpreted under Austrian law (an issue that neither party addressed in their initial or supplemental submissions). In any case, Respondent agreed to submit to the mandatory administrative proceeding of the UDRP in respect to the disputed domain name it registered, and this agreement expressly confers jurisdiction on the Panel to decide this proceeding under the UDRP. All other disputes other than that regarding the disputed domain name registration not brought pursuant to the mandatory administrative proceeding provision of paragraph 4 of the UDRP shall be resolved between the corresponding parties through any court, arbitration or other proceeding that may be applicable.
Because Complainant is the owner of the trademarks at issue, and because it is not a party to the dispute resolution or choice of law and forum provisions of the contract between Fashion TV Ltd. and Evening Star, the Panel believes that retaining jurisdiction over the dispute is proper in order to reach a finding under the UDRP. To the extent Respondent disagrees, it will be free to file suit to prevent the implementation of this decision to permit a court to address these issues on a more complete record. See generally Policy paragraph 4(k). The Panel notes, however, that it does not reach a decision as to whether in fact such contract provisions would impact resolution of this dispute had Complainant’s situation been different vis-a-vis Fashion TV Ltd. and Evening Star.
B. Identical or Confusingly Similar
6.4 It is undisputed that Complainant owns trademark rights in F FASHION TV and the diamond-f logo. Although “Fashion TV” (the only part of the trademark that is in common with the domain name) has some descriptive qualities, some of Complainant’s trademark registrations appear to be registered without disclaimers, which reflects a determination by the relevant trademark offices that the term is either distinctive for the particular goods or services in the registrations, or has acquired distinctiveness. Respondent has not argued (and the Panel has found no reason to believe) that the FASHION TV element of the mark would not be protectable.
6.5 It is likewise undisputed that the disputed domain name, <betfashiontv.com>, “incorporates the entirety of a trademark” or contains “at least a dominant feature of the relevant mark.” The addition of the descriptive term “bet” (used in connection with a gambling website) does not change the analysis of confusing similarity for purposes of the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
6.6 Complainant has therefore satisfied the first element of the Policy.
C. Rights or Legitimate Interests
6.7 Although Complainant is not a named party to the contract between its affiliate and Evening Star, the question of whether Evening Star has or had rights or legitimate interests in the disputed domain name is largely governed by that contract between FTV Ltd. and Evening Star.
6.8 Evening Star argues that the contract “grant[s] [it] the global rights to use the brand ‘Fashion TV’ for all online gaming activities,” Response at 5, that there is a “valid license Agreement, which allows the Respondent to use the ‘fashionTV’ trademarks of the Complainant,” and that Section 3.3.2 of the contract grants Evening Star the “irrevocable right to register domains [in] the name of the escrow agent, Fiduserve Escrow Services Ltd.” Id. at 9.
6.9 These arguments are incorrect as a matter of fact and law under the plain meaning of the contract. Evening Star has no right to register any FTV domain name on its own, no right to have any escrow agent other than Fiduserve hold any FTV domain name, and no right to use any FTV domain name (other than through FTVGG’s use, which Evening Star had the right to manage).
6.9(a) In particular, Section 3.1.1. of the contract makes clear that, should Evening Star want any domain names (other than the five domain names listed in the contract) to be registered for use by the joint venture, it could make such a request to FTV and FTV would thereafter have the obligation to register such domain names. Evening Star complains that FTV has not complied with this provision of the contract, but Evening Star’s remedy would be to challenge FTV’s breach through the dispute resolution provisions. There is no right of self-help in the contract that justifies Evening Star’s unilateral registration of additional domain names, nor does the contract permit Evening Star to park such domain names with an escrow agent of its own choosing.
6.10 The Panel thus concludes that Respondent had no rights – under the contract or otherwise – to register domain names containing Complainant’s trademark. As such, the Panel concludes that Complainant has satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
6.11 Bad faith is “broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.” WIPO Overview 3.0, section 3.1. Pursuant to paragraph 4(b) of the Policy, the following non-exclusive but illustrative circumstances provide evidence of the registration and use of a domain name in bad faith by its holder:
(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 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 website or other online location, by creating a likelihood of confusion with 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.
6.12 Respondent’s conduct in this case appears, to the Panel, to have been undertaken in bad faith. Although Respondent contends that the contract still governs, it did not enforce its rights under the contract to force Complainant to comply with the terms. Instead, frustrated with what it claims were Complainant’s breaches, Respondent took matters into its own hands, registered a new domain name containing Complainant’s mark through an unapproved escrow agent, and launched an unauthorized website that also displayed Complainant’s design mark on the website, all of which caused actual confusion as to the source of Respondent’s website. Regardless of whether this conduct was done in intentional breach of the contract, or to disrupt the business of Complainant, or to provide Respondent with undue leverage for its negotiations with Complainant, the conduct was inconsistent with Respondent’s obligations under the contract. As such, the Panel finds that Respondent’s conduct reflected bad faith registration and use of the domain name.
6.13 Supporting the Panel’s finding of bad faith is the fact that neither Evening Star nor FTVGG asked FTV Ltd. to register the disputed domain name (which the contract required), sought permission for its use (which the contract required), nor sought any sort of legal action to declare the contract in force, in breach or to confirm their right to continue operating an FTV branded online casino.
6.14 Thus, contrary to Evening Star’s arguments that it has merely acted in good-faith performance of its contractual duties, it is clear that Evening Star is continuing to profit off of association with FTV’s trademarks and continues to own a domain name confusingly similar to a trademark that belongs to Complainant – which it has no right to own and which it knew or should have known (based on the text of the contract) it has no right to own or to have held by Caterbridge. Such registration and use is inconsistent with an assertion of good 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, <betfashiontv.com>, be transferred to Complainant.
David H. Bernstein
Date: October 9, 2018