WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access Case No. D2009-0817 1. The Parties
The Complainants are British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) represented internally.
The Respondent is Global Access of Isle of Man, United Kingdom, represented by Renova, Ltd., Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On June 22, 2009, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2009. The Response was filed with the Center on July 21, 2009.
The Center appointed Alan L. Limbury, Tony Willoughby and Diane Cabell as panelists in this matter on August 17, 2009. 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.
On August 18, 2009, the Complainant filed an informal and unsolicited supplementary submission with the Center, with copies to the Respondent and, inappropriately, to the members of the Panel. On August 25, the Respondent filed an unsolicited reply. 4. Factual Background
For over 20 years the Complainants have operated in the United Kingdom and the Republic of Ireland a pay television satellite broadcasting service under the trademark SKY. The first Complainant is the registered proprietor of the following trademarks:
Trade Mark
Country
Registration Date
Classes
SKY
UK
November 7, 1995
3,9,14,16,35,36,38, 39,41,42
SKY TRAVEL
UK
December 12, 2002
9,16,28,35,38,39,41, 42,43
SKY TRAVEL
UK
June 25, 2001
9,16,35,38,39,41,42,43
SKY TRAVEL
European Community
April 30, 2003
9,16,18,25,28,35,38,39,41,42
The first Complainant is the registrant of the domain names and . The second Complainant is licensed to use those trademarks and domain names. Unless otherwise stated, both Complainants will be referred to as “the Complainant”.
The Complainant and its licensees use the SKY TRAVEL marks in connection with travel-related services. The Complainant has been broadcasting a channel named Sky Travel since 1994 and operating a website at “www.” since 2002.
The disputed domain name was first registered on March 28, 2000 in the name of Ultimate Search and was transferred to the Respondent on August 17, 2007. It resolves to a website containing pay-per-click links to travel-related services, some of which compete with the services offered by the Complainant.
The Complainant received no reply to a cease and desist letter dated November 11, 2008.
On March 23, 2009, the Respondent became the registered proprietor by assignment of United States trademark No. 3061950 SKY TRAVEL INC. On March 31, 2009, the Respondent registered SKY TOURS as a trademark in Benelux (No. 0860748) and on April 3, 2009, the Respondent applied to register SKY TRAVEL as a trademark in Benelux (Application No. 1179404). That application is presently under opposition. 5. Parties' Contentions A. Complainant
The transfer of the disputed domain name to the Respondent in 2007 constituted a new registration within the meaning of the Policy. By then the Complainant had acquired and established substantial goodwill and reputation in the SKY and SKY TRAVEL marks.
The disputed domain name is identical to the Complainant's SKY TRAVEL mark.
The Respondent has no right or legitimate interest in the disputed domain name because the Respondent is not commonly known by that name and is using the Complainant's goodwill to attract web users to its website and to divert them to the Complainant's competitors, while generating “pay-per-click” revenue for itself. Further, the fact that the Respondent has over 800 domain name registrations, some of which are contentious, such as , , and , casts doubt on the legitimacy of its registration of the disputed domain name.
The disputed domain name was registered and is being used in bad faith because the significant reputation of the Complainant's SKY TRAVEL brand, the advertising by the Respondent of identical services to those offered by the Complainant and the transfer occurring 13 years after the first use of the Complainant's SKY TRAVEL brand show that the Respondent's purpose was to divert traffic away from the Complainant for commercial gain by creating a likelihood of confusion with the Complainant's marks and website as to the source, affiliation or endorsement of the Respondent's website and the services there advertised.
The Respondent must have been aware of the Complainant's brand when registering the disputed domain name. Alexa analysis shows that over 80% of visitors to the Respondent's website are from the UK, reflecting the significant reputation of the Complainant's SKY TRAVEL brand there and suggesting that the majority of site visitors are seeking the Complainant's services and are deceived by the Respondent's web site.
It cannot be argued that the disputed domain name is being used descriptively, since the combination of the two ordinary English words together in the phrase “sky travel” is not one with any meaning in English. Hence there can be no normal English reason for the Respondent to have chosen that phrase.
Further indications of the Respondent's bad faith are its history of attempts to misappropriate other famous trademarks and its failure to reply to the Complainant's cease and desist letter. B. Respondent
The Complainant's claimed SKY TRAVEL marks are descriptive, not distinctive, of the travel-related services with respect to which they are registered. Nor are they unique, since others use the same or similar marks in the travel industry. Further, the Complainant's trademarks were all registered after the original registration of the disputed domain name by Ultimate Search, which used the domain name as a search portal including for travel-related matters. Such use of the domain name thus predates the Complainant's trademark applications and travel agency services.
The phrase “sky travel” has been commonly used since 1920 in its descriptive sense in connection with travel-related services. By continuing such historical use the Respondent cannot be said to be suddenly confusing the consuming public. Further, the Complainant appears to have abandoned its asserted mark because Wikipedia indicates that “Sky Travel” programming has not been shown outside a limited pay-per-view audience since 2005.
The Complainant bears the burden of proof of showing the Respondent's absence of rights or legitimate interests. Here the Respondent has established rights in the disputed domain name through its trademark registrations. The United States registration for SKY TRAVEL INC in class 39 for travel-related purposes was effective on February 22, 2005 with first use at least as early as January 1, 2005, long before notice of this dispute. The Benelux marks are both valid and subsisting even though the SKY TRAVEL application is under opposition. The Complainant is well aware of them (having corresponded in relation to them) and could easily have found out about the United States registration.
The Respondent's three marks demonstrate the Respondent's rights in the disputed domain name. Any assessment of their validity would be improper under the Policy since such issues are best left to adjudication: EducationDynamics LLC v. Texas International Property Associates, NAF Claim No. 1139891, citing Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334. Those cases addressed the assessment of the complainant's trademark rights under the Policy, paragraph 4(a) but, to avoid double standards contrary to the purpose of the Policy, the same principle should apply to the assessment of a respondent's rights when in possession of a valid and subsisting trademark.
While a panel may be tempted to attempt to measure the “quality” of a respondent's trademark rights (for example by discarding those recently acquired), such issues are best left for formal litigation where the legal rights may be properly measured following trial.
A respondent need show only that it holds “a” right, not necessarily one that is superior to the right of the complainant. Given the summary nature of proceedings under the Policy, it is appropriate that good faith disputes between competing legitimate interests be decided in the courts.
Irrespective of any trademark rights, the Respondent's use constitutes a bona fide and fair use under the Policy. The terms “sky” and “travel” are commonly used in relation to travel and the phrase “sky travel” dates back to 1920. Use of a domain name for information related to the subject matter of which the domain name is descriptive is a legitimate use.
Citing McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc.,WIPO Case No. D2007-0676, the Respondent says pay-per-click websites are not in and of themselves unlawful or illegitimate and that their legitimacy is heightened where, as here, the asserted mark is not famous and there is evidence of third party descriptive use. Here the domain name has been used in the same manner for almost a decade.
Citing Combined Insurance Group Ltd v. Xedoc Holding SA c/o domain admin, NAF Case No. NAF Claim 1261545 and Combined Insurance Group Ltd v. iclicks c/o Michael Mayder, NAF Claim 1261538, the Respondent says the use of terms in their commonly understood descriptive sense is “fair use” under the Policy, paragraph 4(c)(iii), even when such use is commercial.
The Complainant's delay for 8 years in bringing this Complaint is evidence of the bona fide nature of the Respondent's (and many others') use of the terms and that the Complainant did not have a problem with the disputed domain name.
The Respondent denies bad faith registration and use and says the Complainant's assertions are insufficient to succeed on this issue. The Complainant's assertions of fame are all directed to the SKY broadcasting system and not to the SKY TRAVEL trademark, as to which little is stated. This is not a case where a domain name is similar to a trademark which is so inherently distinctive or famous that registration and use of the domain by anyone but the trademark owner would be impossible. There is nothing inherently distinctive in the terms “sky travel” for providing travel-related services.
The domain name and the mark reach vastly different audiences. The domain name has been continuously registered and used for travel-related purposes since 2000. There can be no confusing similarity where generic/descriptive use is made of a generic/descriptive term. The Respondent registered the disputed domain name to be used in connection with advertising and other information related to travelling, including air travel, without any intent to target the Complainant or its business. This is reflected in the website content.
The Response exhibits a declaration by Mr. Taylor, a director of the Respondent, who says he has been a subscriber to the Complainant's SKY broadcasting services since January, 2001, yet was unaware of SKY TRAVEL as a service or brand name of the Complainant until this Complaint was made, as were two of his colleagues; the Respondent acquired the disputed domain name in 2007 to use as a general descriptive term for travel related materials; the Respondent's information showed that the term had a long history of use dating back to the 1920s in the United States; and that visitors to the Respondent's website are predominantly from that country.
Another declaration shows that, when the Alexa website was recently accessed from Canada, 40.8% of users of the Respondent's website were shown to be from the United States and 34.2% from the United Kingdom.
A third declaration states that in December 2008 a reply to the Complainant's cease and desist letter was prepared in the law firm representing the Respondent but, unaccountably, there is no evidence it was ever sent. In any event, failure to reply to a cease and desist letter does not evidence bad faith. C. Supplementary Submissions
Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the “sole discretion” as to acceptance and consideration of additional submissions. The Panel has had regard to the Complainant's unsolicited submission only insofar as it provides the date of the assignment to the Respondent of the United States registered trademark SKY TRAVEL INC. The Panel has had no regard to the Respondent's unsolicited submission. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Both Complainants have rights in the registered trademark SKY in the United Kingdom and SKY TRAVEL in the United Kingdom and the European Community.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domain “.com” is to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Likewise the content of the Respondent's website must be disregarded: A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900.
The Complainant makes no submission as to whether the disputed domain name is identical or confusingly similar to its SKY mark. The Panel makes no finding in that regard and does not consider that mark further.
The disputed domain name is clearly identical to the Complainant's SKY TRAVEL mark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Once a Complainant establishes a prima facie case against the Respondent, the burden is on the Respondent to provide evidence of its rights or legitimate interests under paragraph 4(c): Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.
The Panel does not accept the Respondent's argument that, for the purposes of the Policy, paragraphs 4(a)(ii) and 4(c)(ii), the question whether a respondent has trademark rights corresponding to the disputed domain name must be considered at the time of the filing of the complaint, as is the case when considering whether a complainant has rights in a trademark for the purposes of the Policy, paragraph 4(a)(i). The Panel respectfully adopts the reasoning of the panel in BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298:
“(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent's domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant's rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is ‘legitimate'.”
Here all the Respondent's trademark applications and registrations were made shortly after the Respondent received the Complainant's cease and desist letter and almost two years after the Respondent's acquisition and registration of the disputed domain name. There is no explanation for choosing Benelux as one of the jurisdictions in which to obtain trademark rights. Moreover, the Respondent does not claim to have been commonly known by the disputed domain name, despite having acquired trademark rights.
Under these circumstances the Panel does not regard the Respondent's trademark rights as demonstrating that the Respondent has rights or legitimate interests in the disputed domain name. By the same token, these circumstances are insufficient in this case to give rise to a finding of absence of rights or legitimate interests on the part of the Respondent. The timing of the Respondent's trade mark applications is simply indicative of an attempt on the part of the Respondent to bolster its position under the Policy.
The fact that, for some time, the prior registrant used the disputed domain name for travel-related purposes before the Complainant acquired its trademark rights could be relevant to the issue whether the phrase “sky travel” is descriptive and commonly used. On the other hand, it may have been the case that the prior registrant adopted the name with the Complainant's trade mark (then unregistered) in mind. There is no evidence on the point. Either way, the prior registrant's use of the disputed domain name does not confer any special advantage on the Respondent. It is still possible therefore that the Respondent had the Complainant's mark in mind when acquiring the disputed domain name and intended impermissibly to trade off the Complainant's reputation.
While the Panel recognises that possibility and notes that the Respondent has registered a large number of domain names, some of which might appear to be in contravention of the Policy, each case must be decided on its merits on the material properly presented to the Panel. As to the other potentially objectionable domain names in the Respondent's portfolio, there is nothing before the Panel to suggest that the domain name in issue is part of an abusive pattern.
Having regard to (i) the declaration of Mr. Taylor that he and others within the Respondent were unaware of the Complainant's mark when the Respondent registered the disputed domain name (ii) the use of that phrase dating from 1920 in reference to travel by air and the evidence of current widespread third party use of domain names incorporating that phrase in the travel industry; (iii) the absence of any evidence that the Respondent paid a price for the domain name which reflected its value as a trademark as distinct from its value as a descriptive term; and (iv) the use by the Respondent of the disputed domain name in connection with travel-related services of the kind to which the phrase arguably refers, in other words descriptively, the Panel is not satisfied that the Respondent lacks a legitimate interest in respect of the disputed domain name.
The Complainant has failed to establish this element of its case. C. Registered and Used in Bad Faith
In light of the Panel's finding under the previous heading, it follows that the Complainant has established neither the requisite intention on the part of the Respondent to “target” the Complainant at the time of registration nor that the Respondent's current use is intended to cause confusion with the Complainant's mark. On the material presented to the Panel there are no grounds under the Policy, paragraph 4(b) or otherwise for a finding of bad faith registration and use.
For the Panel to have come to a finding of bad faith registration and use of the disputed domain name, the Panel would have had to have concluded that the declaration of Mr. Taylor, to the effect that he and others within the Respondent were unaware of the Complainant's mark when the Respondent registered the disputed domain name, was false. For one member of the Panel this would have been particularly difficult as he, like Mr. Taylor, has been a subscriber to Sky for many years and was similarly unaware of the Complainant's Sky Travel channel/trade mark until he received the papers in this case.
The Complainant has failed to establish this element of its case.
In sum, the Panel is not satisfied that the Respondent's adoption and use of the disputed domain name amounts to “cybersquatting”, the narrowly defined vice to which the Policy is directed. For any finding of trade mark infringement or passing off the Complainant will have to have recourse to the courts. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Presiding Panelist
Tony Willoughby
Panelist
Diane Cabell
Panelist
Dated: August 26, 2009
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