WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BRITISH SKY BROADCASTING LIMITED v. DOMAIN RESERVATIONS
Case No. D2000-0507
1. The Parties
1.1. Complainant: British Sky Broadcasting Limited of Grant Way, Isleworth, Middlesex, TW7 5QD, England.
1.2. Respondent: Domain Reservations of 81 Belfield Park, Stillorgan, Co. Dublin, Eire.
2. The Domain Name(s) and Registrar(s)
2.1. Domain Names:
2.2. Registrar: Network Solutions Inc.
3. Procedural History
3.1. The Complaint was received by WIPO by email on May 26, 2000 and in hard copy on May 29, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
3.2. The Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the Respondent responded to the Complaint within time by email on June 19, 2000. The Response led to further emails to WIPO, the content of which is referred to below. Nonetheless, it is convenient to mention here that these exchanges highlighted a dispute as to fact and both the Complainant and the Respondent have offered to verify their evidence on oath, an offer which has not been taken up by the Panel.
3.3. The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
3.4. No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel�s Decision is July 18, 2000.
4. Factual Background
4.1. Apart from the dispute as to fact referred to in the previous section and at paragraph 4.3 below, none of the background facts are in dispute. In particular, the following are not in dispute:
4.1.1. The Complainant is a member of the British Sky Broadcasting Group Plc. with a claimed turnover of �1,545 million for 1998/1999 and is one of the leading providers of analogue and digital subscription television channels in the UK and Eire and the leading provider of such services in the UK and Eire provided direct to home by satellite.
4.1.2. The Complainant is and at all material times has been the registered owner of three UK trade mark registrations for SKY MOVIES (words) dated June 15, 1988, June 15, 1988 and May 2, 1996 respectively and one UK trade mark registration for SKY BOX OFFICE (words) dated November 7, 1995 (together "The Trade Marks").
4.1.3. In February 1989 the first ever UK and Eire movie subscription channels were launched by a group company of the Complainant under the mark SKY MOVIES. In June 1994 as part of the restructuring of the Complainant�s group, the Broadcasting Licences for all channels, including the SKY MOVIES channels were transferred to the Complainant. By April 1998 and at all material times thereafter there have been approximately 3.5 million subscribers in the UK and Eire to at least one of the Complainants� Sky Movies channels. On March 17, 1996 the first pay per view event on British Television was held under the SKY BOX OFFICE mark which was viewed by 660,000 paying subscribers in the UK and Eire. In December 1997 the Complainant launched a pay per view movie channel in the UK and Eire under the mark SKY BOX OFFICE. The SKY MOVIES and SKY BOX OFFICE channels have been widely advertised, marketed and promoted in the UK and Eire.
4.1.4. In the result by at least April 1998 the Complainant had and continues to have substantial goodwill and reputation in the UK and Eire in its business represented by The Trade Marks.
4.1.5. The Respondent has the business name Domain Reservations and operates the email address webmaster@. It registers domain names and is willing to sell them. On or about April 30, 1998 the Respondent registered with Network Solutions Inc. and ("The Domain Names").
4.2. Sub-paragraph 4.1.5 apart, the preceding sub-paragraphs represent a summary of paragraphs 12 and 13 of the Complaint. Sub-paragraph 4.1.5 is plain from the papers put before the Panel. In its email of June 19 and in its subsequent emails of June 28 and 30 the Respondent does not take issue with any of the above.
4.3. On or about February 11, 2000 Katie Cole of the Complainant and John Cummins of the Respondent had a telephone conversation in the course of which Katie Cole indicated that the Complainant was interested in purchasing The Domain Names. There is a dispute between the parties as to which party first made contact with the other. The Panel is unable to resolve that dispute of fact and does not find it necessary to do so. Having both parties verify their evidence on oath will not assist.
4.4. On February 15, 2000 Katie Cole on behalf of the Complainant made an offer by email to purchase The Domain Names for �10,000 sterling each. On February 18, 2000 John Cummins made a counter offer on behalf of the Respondent by email, offering to sell The Domain Names for �95,000 sterling each.
5. Parties� Contentions
A Complainant
5.1. In relation to "" the Complainant claims that the relevant part of this domain name is "skyboxoffice" which is identical to the Complainant�s trade mark SKY BOX OFFICE (words). In addition, the Complainant submits that the whole of the domain name "" is identical or confusingly similar to the Complainant�s trade mark for SKY BOX OFFICE (words).
5.2. Similarly, in relation to "" the Complainant claims that the relevant part of this domain name is "skymovies" which is identical to the Complainant�s trade marks SKY MOVIES (words). Again, the Complainant submits that the whole of the domain name "" is identical or confusingly similar to the Complainant�s trade marks for SKY MOVIES (words).
5.3. The Complainant states that it is aware of no evidence that at any material time the Respondent has ever had any legitimate interest in or any proposal to make any legitimate use of The Domain Names or either of them.
5.4. The Complainant submits that The Domain Names were registered and used in bad faith. It claims that the evidence set out in the Complaint proves that the Respondent registered or acquired The Domain Names primarily for the purpose of selling, renting or otherwise transferring them to the Complainant for valuable consideration in excess of the Respondent�s documented out of pocket costs related directly to The Domain Names. The Complainant goes on to point out that the Respondents� name Domain Reservations indicates that the nature of the Respondent�s business is to trade in domain names.
5.5. The Complainant submits that the reputation of The Trade Marks is such that it is inconceivable that the Respondent would not have been aware at the time of registration of The Domain Names of the reputation of The Trade Marks and the connection between them and the Complainant. It submits that members of the public in the UK and Eire would believe that an entity owning The Domain Names was the Complainant or in some way associated with the Complainant and that any realistic use of The Domain Names otherwise than by the Complainant must misrepresent an association with the Complainant and its goodwill resulting in passing off in Eire and passing off and trade mark infringement in the UK.
5.6. The Complainant contends that the Panel should issue a decision to the effect that The Domain Names are transferred to the Complainant.
B. Respondent
5.7 The Respondent�s contentions are set out in John Cummins� emails of June 19, June 28 and June 30 and they may be summarised as follows:
5.7.1. The Complainant is a UK company and by reason of the UK being its country of origin is entitled to . domain names "relevant to its orga
