WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sky PLC, Sky UK Limited and Sky International AG v. XaMi Angel, Xam Host
Case No. DTV2016-0001
1. The Parties
The Complainants are Sky PLC and Sky UK Limited of Isleworth, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK") and Sky International AG of Zürich, Switzerland, internally represented. The Complainants are together referred to herein as "the Complainant".
The Respondent is XaMi Angel, Xam Host of Lahore, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <skysportslive.tv> 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 February 12, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 February 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 25, 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant describes itself as Europe's leading entertainment company, serving 21 million customers across five main countries: Italy, Germany, Austria, the UK and Ireland. It further describes itself as one of the leading entertainment, communications and consumer technology companies in the United Kingdom, and the leading pay television service in the United Kingdom and Ireland, broadcasting a wide range of TV channels, including news, sports, music and movies. The Complainant owns several registered trademarks for SKY SPORTS (the "Mark"), e.g., UK Trademark No. 2056901A (issued February 28, 1997), Ireland Trademark No. 828571 (issued August 8, 2007), and Swiss Trademark No. 599082 (issued April 6, 2010).
According to the WhoIs database, the Respondent registered the disputed domain name on November 10, 2014. The website linked to the disputed domain name provides video content taken from sources provided by the Complainant without license or authorization from the Complainant, which the Complainant asserts violates applicable copyright law.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations of the Mark in several countries, all of which predate the registration of the disputed domain name. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the Mark.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant's Mark. "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant's trademark SKY SPORTS in its entirety. The addition of the word "live" does nothing to diminish this confusing similarity. As the Panel held in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". In the present case, the dominant element in the disputed domain name is the Mark. The word "live" is, in light of the nature of the Complainant's media and entertainment services, entirely generic.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In this case, the Panel credits the Complainant's assertion that to its knowledge, the Respondent is not using and has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Further, the Complainant asserts, and the Panel accepts, that the Respondent is not or has been known in the past by the disputed domain name. Further, based on the record, the Respondent is not making and has never made any legitimate noncommercial use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed on this element of the UDRP.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location."
In this case, it is clear that the purpose of registering the disputed domain name was primarily to rely on the value of the Mark in order to confuse Internet users into believing that the website connected to the domain name was associated with the Complainant's services, to attract Internet users to the Respondent's website, generate revenue, and to offer visitors to it genuine content without license or authorization, causing detriment to the Complainant.
The Complainant has prevailed on this third element of the UDRP.
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, <skysportslive.tv>, be transferred to the Complainant.
Evan D. Brown
Date: April 6, 2016