WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ITV Consumer Limited v. Primeroweb, Mark Venables Case No. D2009-1409 1. The Parties
The Complainant is ITV Consumer Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Olswang LLP, United Kingdom (UK).
The Respondent is Primeroweb, Mark Venables of Tenerife, Spain. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2009. On October 21, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On October 22, 2009, eNom 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 November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2009.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 7, 2009. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is one of many subsidiary companies of ITV plc. ITV is the operator of a commercial television network in the UK, and responsible for the commissioning, scheduling and marketing of network programmes on ITV1, a commercial public service broadcaster. ITV also owns the digital channel portfolio - ITV2, ITV3, ITV4 and CiTV. Programmes broadcast on ITV's channels are provided by ITV's in-house production unit and by the independent sector. ITV invests around £1 billion per year in network and regional content, funded by advertising and sponsorship revenues. Through its subsidiaries, ITV Studios and ITV Global Entertainment, ITV produces and distributes programmes globally. ITV delivers its on-demand programming via personal computers and television sets via ITV Player, which is available on its “” website.
ITV Player is a website based video-on-demand service accessible though the main ITV website. All of ITV Studios' shows and the majority of independently produced shows broadcast by ITV feature on the service. In addition to being available online ITV also makes its content available via third-party digital broadcasters, such as Virgin Media and BT Vision, under the brand ITV NET PLAYER.
The Complainant is the owner of the following UK trademark registrations (official details were provided as Annex 3 of the Complaint):
No. 2500190, ITV PLAYER (word), filed on October 15, 2008 and registered on February 20, 2009, in respect of goods and services in International Classes 9, 16, 38 and 41.
No. 2500188, ITV NET PLAYER (word), filed on October 15, 2008 and registered on February 20, 2009, in respect of goods and services in International Classes 9, 16, 38 and 41.
The Complainant is also the holder of the domain name , created on November 1, 1994 (WhoIs details shown in Annex 4 of the Complaint).
Members of the ITV Group of companies own a number of ITV-related trademark registrations, such as:
UK No. 2118667A, ITV (word), filed on December 11, 1996;
Ireland No. 226614, ITV (word), filed on July 12, 2001;
CTM No. 4373891, ITV and design logo, filed on April 5, 2005;
UK No. 2425218, ITV PLAY (word), filed on June 22, 2006; and
CTM No. 6370415, ITV (word), filed on October 16, 2007.
Printouts from the relevant official databases were provided as Annex 3 of the Complaint.
Members of the ITV Group of companies own a number of ITV-related domain names, such as:
, registered on May 21, 2008;
, registered on August 2, 2005; and
, registered on August 2, 2009.
The Respondent registered the disputed domain names on December 5, 2008. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant argues that and are virtually identical to the Complainant's prior trademarks ITV PLAYER and ITV NET PLAYER.
The Complainant contends that it takes action against, and does not consent to, any attempts by third parties to use the mark ITV or ITV PLAYER in relation to the goods or services covered by these trademark registrations in the UK. The Complainant concludes that, whilst it must assume that Tenerife is the Respondent's place of business, the Respondent also has a UK telephone number, which suggests that the Respondent also operates in the UK.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant has not consented to the Respondent's use of the domain names; the Respondent is not related in any way to the Complainant; the Respondent has not made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; and the Respondent is not commonly known by or .
The Complainant argues that the disputed domain names were deliberately registered and used for an illegitimate purpose, namely seeking to create confusion on the part of the public between the Respondent and the Complainant for commercial gain. This is, according to the Complainant, evidenced by the fact that the Respondent is publishing content taken from the Complainant's website and has copied the Complainant's website banner for ITV PLAYER. Further, the Respondent's website provides links to third-party websites which offer, inter alia, digital TV services (evidence of this use was supplied as Annex 8 of the Complaint).
Finally, the Complainant states that and was registered and are being used in bad faith.
Both disputed domain names have been offered for sale on a website linked to another of the Respondent's domain names (Annexes 10 and 11 of the Complaint showed a copy of the site and the connected WhoIs record). The Complainant also contends that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its marks in corresponding domain names, and refers to four other domain names held by the Respondent that are similar to other well-known media companies, concluding that the Respondent has a history of bad faith registration.
According to the Complainant, referring to its global fame, it is inconceivable that the Respondent was not aware of the Complainant or its activities when the disputed domain names were registered on December 5, 2008, particularly given that the Respondent's website is targeting viewers of UK digital television services.
The website related to the Respondent's domain names has a number of close similarities with the Complainant's website, such as an identical FAQ page (shown in Annexes 13 and 14 of the Complaint), the same colour scheme, the same banner for ITV PLAYER, etc.
The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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 is the owner of the UK trademark registrations no. 2500190 ITV PLAYER (word) and no. 2500188 ITV NET PLAYER (word), both filed on October 15, 2008 and registered on February 20, 2009.
The relevant part of the disputed domain names is “itvplayer”, as it is well-established in previous UDRP cases that the added top-level domain, being a required element of every domain name, is not dispositive when establishing whether or not a mark is identical or confusingly similar.
The Panel finds that both and are therefore to be considered as identical to the trademark ITV PLAYER.
The disputed domain names are also conceptually close to the Complainant's registered trademark ITV NET PLAYER, being almost identical except for the “NET” part of the trademark. As ITV PLAYER and ITV NET PLAYER are trademarks for the Complainant's online services, the Panel concludes that the disputed domain names and are at least confusingly similar to the trademark ITV NET PLAYER, since the term “net” is merely a descriptive indication that the services are provided online. The absence of “net” in the disputed domain names makes no difference when considering the question of identity or confusing similarity.
Accordingly, the Panel finds that the disputed domain names are identical to the Complainant's trademark ITV PLAYER and confusingly similar to the trademark ITV NET PLAYER. B. Rights or Legitimate Interests
The Respondent is apparently not an authorized agent or licensee of the Complainant and has no other permission from the Complainant to apply for any domain names incorporating to the trademarks ITV PLAYER or ITV NET PLAYER.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the disputed domain names.
As shown by the Annexes to the Complaint, the Respondent has used the domain names for a website that is: i) partly copied from the Complainant's website, and ii) providing links to third-party websites offering, inter alia, digital television services.
As established in a number of UDRP cases under similar circumstances, such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is [a] deliberate infringement of another's rights”. See also Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258, stating that “…the Respondent is not connected with the Complainant, but uses the Complainant's mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favour of the Respondent”.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant is a company based in the United Kingdom, whereas the Respondent seems to be based in Tenerife, Spain. The Complainant's trademarks ITV PLAYER and ITV NET PLAYER are registered in the UK, were filed before Respondent's registration of the two disputed domain names, but were registered two months after that date.
There are, however, several circumstances in this case which, to this Panel, strongly indicate that the Respondent registered and specifically with the Complainant's trademarks and services in mind.
There are ITV trademark registrations, owned by other members of the Complainant's group of companies, predating the registration of the disputed domain names by several years, such as the Community Trademark Registration No. 4373891, ITV and design logo. The ITV and ITV PLAYER trademarks, and the services of the Complainant and the other ITV companies, are well-known throughout Europe and the Panel therefore finds it likely that the Respondent had actual knowledge of the Complainant's trademark rights at the time it registered the disputed domain names.
In addition, it seems that and have, from the date of registration and onwards, solely been used in a deliberate attempt to create confusion with the Complainant's trademarks and services, and to derive revenue as a direct result of such confusion. The Respondent has copied content, including banners and colour scheme, directly from the Complainant's website.
Moreover, and as evidenced by the Complainant, the Respondent has offered the disputed domain names for sale. Considering the bad faith commercial activities conducted by the Respondent on the website linked to the disputed domain names, the Panel concludes that the offer for sale must be for more than just the Respondent's out-of-pocket costs directly related to the registration of the two domain names.
In summary, and based on all the above circumstances, such as the notoriety of the Complainant's marks, the obvious attempt to create a web page confusingly similar to the corresponding website of the Complainant, the links to competing third-party websites, and the offer for sale of the disputed domain names, the Panel concludes that the Respondent registered and is using and in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: December 21, 2009
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