WIPO Domain Name Decision D2018-0878 for betfashiontv.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION 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 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 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, 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.”. 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 , , , , and ), 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, , 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.bet 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 domain name resolves states, in part, “Bet is a brand owned by Fashion TV Gaming Group”.
4.15 The website to which the 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 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 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 A. Complainant
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 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.bet” is allegedly confusingly similar to Complainant’s own URL, “www.”.
5.5 Complainant further alleges that, even if there were a license that allowed FTVGG to use its trademarks or