WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yorkshire Television Limited v. Internet Commerce, Inc.
Case No. D2003-0237
1. The Parties
The Complainant is Yorkshire Television Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Linklaters of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Internet Commerce, Inc. of Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name is . This domain name is registered with Intercosmos Media Group d/b/a directNIC.com. ("the Registrar") whose mailing address is 650 Poydras Street, Suite 1150, New Orleans, Louisiana, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on March 25, 2003. On March 27, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 27, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient by reason of a change in the name of the Respondent, the Complainant filed an amendment to the Complaint on April 8, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2003. Having received no communication from the Respondent by the due date, the Center on May 7, 2003, sent a Notification of Default to the Respondent.
The Center appointed James G. Fogo as the sole Panel member in this matter on May 15, 2003, having received from the Panelist an executed Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
The Complainant, Yorkshire Television Limited is one of the largest television companies in the United Kingdom. It was established in 1968, initially providing programme production and broadcasting service to the Yorkshire region and extending to adjacent counties to the north and south of Yorkshire. In time, it obtained an international audience through exporting its programs to EU and non-EU countries. Yorkshire Television programmes have been sold and shown in at least 48 countries worldwide including North America. It is estimated that programmes of Yorkshire Television shown in the United Kingdom reach more than 12 million viewers and substantially more viewers watch programmes abroad. For more than 35 years, the Complainant has built up substantial value and good will in the trade mark throughout the United Kingdom and abroad.
The complainant is the owner of three United Kingdom registrations of the mark YORKSHIRE TELEVISION as follows:
1. UK Trade Mark Reg. No. 1272941, registered July 10, 1992 Class 35
2. UK Trade Mark Reg. No. 1274832, registered April 3, 1992 Class 38
3. UK Trade Mark Reg. No. 1277476, registered May 8, 1992 Class 41.
The domain name was created on December 2, 2002, and registered to Telmex Management Services of Tortola, British Virgin Islands. The Registrar of the domain name was directNIC.com.
The Complainant advised that it first became aware of the registration of the domain name in issue when receiving complaints that a domain name was linking to either an escort service or to pornographic content.
On February 7, 2003, an executive of the Complainant�s parent company directed a complaint to the service provider hosting the web site. He called attention to the server�s hosting terms, one of which provided that use of redirectional services to provide adult/illegal material was unacceptable. He requested the deactivation of the Respondent�s site or the freezing of the user�s account, if immediate transfer were not possible. Neither step was immediately taken.
As of March 7, 2003, one who accessed the Respondent�s domain name would have been linked immediately and automatically to "ttp://" a page containing a sexually-suggestive photo of a female model, the flags of fifteen countries and the invitation "Welcome to the english version of Temptations@Work!" This welcome message was followed by a dynamic text which referred to a new form of global staffing, ready to supply a variety of staff including, inter alia, hosts, escorts, translators, dinner dates and "our famous SEXETARIES".
On or about March 13, 2003, the identity of the registration was changed to Lost in Space SA with an address at Palma de Mallorca, Spain. The domain name in issue resolved to "," which contained symbols for "male" and "female," reference to a club "PINKS". A similar dynamic text included reference to the opening of the venture on May 1, 2003, and the offering of luxury apartments and bed and breakfast accomodation on the island. The administrative and technical contacts changed, but the telephone and fax numbers for the address of this registration in Spain were identical to numbers given for Telmex at Tortola.
On or about March 19, 2003, the identity of the registration was again changed, this time to easyspace, with an address said to be 33 Minories, London, UK, EC1 4RR.
A different administrative and technical contact was named.
On March 25, 2003, the Complaint of Yorkshire Television Limited was received by the Center. On the same date, the identity of the registration was again changed, to Internet Commerce, Inc. at the address Suite 3650, North Green Valley Pk Road, Henderson, Las Vegas, Nevada, 89104, United States of America. The administrative and technical contact named was Louise Alcock at the same address. The address proved to be incomplete and no acknowledgement or response from this source was received. It can be noted that the telephone and fax numbers given for Internet Commerce, Inc. were the same as those given for both Telmex and Lost in Space SA.
By April 3, 2003, the Center was able to report that the current Registrar had confirmed that the disputed domain name registration had been locked and no further transfers could take place while the case was under consideration. When, on April 4, 2003, the disputed domain name was viewed, it now pointed to a web site entitled "Movie Haven", an adult site with many explicit pictures, offering online movies for download.
5. Parties� Contentions
A. Complainant
The Complainant seeks to have the domain name transferred to it.
The Complainant asserts that the disputed domain name is identical to its registered trade mark, by incorporating its distinctive trade mark in its entirety. The Complainant also considers the disputed domain name to be confusingly similar to its trade mark.
The Complainant considered that a member of the public viewing the domain name address would most likely assume that persons responsible for the domain name were licensed or sponsored by the Complainant.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has never licensed or authorized the Respondent�s use of the Complainant�s trade mark in a domain name. To the contrary, it sought to prevent this use within a short time after the domain name was registered. The Complainant identified itself by the words "Yorkshire Television" for more than 35 years. The Respondent, under any of its various names, was never commonly known as Yorkshire Television. The Respondent cannot establish a right or legitimate use when employing the domain name to attract Internet users for commercial gain and diverting them to a pornographic site.
The Complainant contends that the Respondent registered and is using the domain name in bad faith.
The Respondent registered and is using the domain name to make illegitimate commercial use, intentionally diverting users to a different site creating a likelihood of commercial confusion for the Respondent�s financial gain. The Respondent�s acts tarnished the marks of Yorkshire Television when initially it associated the name with an escort service and later when it used the domain name to direct users to a site offering the sale of pornographic movies. In each case, the Respondent acted in bad faith.
The Complainant also submits that the repeated changes in the Registrant�s identity and content information over a short period of time, as well as incomplete or inaccurate or omitted information, was deliberate and intended to avoid or delay enforcement under the UDRP proceeding. It should amount to an act of bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions. Paragraph 5(e) of the Rules provides that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.
No exceptional circumstances are known. Findings may therefore be made on the basis of the information contained in the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules and any rules and principles of law that it deems applicable.
The Complainant has the burden of demonstrating three elements by reason of Paragraph 4(a) of the Policy.
(i) that the Complainant has rights in a trade mark or service mark with which the Respondent�s domain name is identical or confusingly similar;
(ii) that the Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns registrations of the trade mark "YORKSHIRE TELEVISION" with which the domain name is virtually identical. The Respondent has removed the space between the two words, but this is a requirement when registering any domain name. The additional element "com"is a TLD, which is ignored for the purpose of assessing similarity.
The Complainant�s trade mark has been used for more than ten years before the Respondent�s registration of the domain name. The trade mark has been widely used, associated with the television productions performed in the United Kingdom and sold in many countries of the world. The adoption by the Respondent of an essentially identical domain name would clearly create confusion.
The Panel holds that the Complainant has met the first element of paragraph 15(a) of the Rules.
B. Rights or Legitimate Interests
The Respondent has failed to file a Response and thereby has not asserted any rights or legitimate interests. However, the Complainant must establish that the Registrant has no right or legitimate interest in the domain name.
The Panel accepts that in the field of television creation and transmission, the name and trade mark of Yorkshire Television are widely known after more than 35 years of use. The Panel concludes that in placing the words "yorkshire" and "television" together side by side, the Respondent knew well that it was using a valued name of the Complainant.
The Complainant has never licensed or otherwise permitted the Respondent to use the domain name in issue. From the very beginning of this dispute, it was third parties who complained that the domain name was being used as an escort service or pornographic content and so drew the fact to the attention of the Complainant.
It seems clear that the objective of the Respondent under its various names has been to use the domain name to divert consumers to another web site in a manner misleading and not bona fide, and to tarnish the trade mark of the Complainant.
When these proceedings had formally commenced, after a delay for which the Respondent, Internet Commerce, Inc. was responsible, it was shown that the domain name had been diverted to an adult web site offering pornographic movies for sale. There is no evidence that the Respondent ever made a legitimate non-commercial or fair use of the domain name without intent to make money, to misleadingly divert consumers, or to tarnish the mark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
There is no logical explanation for the Respondent�s choice of the contested domain name other than a desire to associate it with the trade mark or domain names of the Complainant. The spellings were identical. The Respondent�s use of the domain name since its acquisition was to attract consumers by a well known name and then divert to a different web site offering the sale of pornographic movies. The acts of the Respondent also create confusion with the Complainant�s trade mark and tarnish the trademark. Under paragraph 4(b)(iv) of the Policy, acts in such circumstances are considered to be evidence of bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
James G. Fogo
Sole Panelist
Dated: May 29, 2003
Full & Egal Universal Law Academy