WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION U-Dox Brand Development Limited v. Galina Budko Case No. D2010-0096 1. The Parties
The Complainant is U-Dox Brand Development Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Jensen & Son, United Kingdom.
The Respondent is Galina Budko of New York City, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2010. On January 21, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On January 21, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 January 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on February 22, 2010. 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.
In the absence of any Response, the Panel has checked the record to ensure that the Center has discharged its responsibility under the Rules to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so. 4. Factual Background
The Complainant is the registered proprietor of the word mark SPINETV in the United Kingdom, under Registration No. 23700336. This mark has been registered with effect from August 5, 2009, in International Classes 9, 16, 23, 35, 38 and 41. The Class 9 registration covers, among other goods, CD's, DVD's, cassettes, video tapes and video cassettes, and electronic publications and software (downloadable) provided online from databases on the Internet. The Class 35 specification includes on-line advertising and television advertising, and the Class 38 registration is for television broadcasting. In Class 41, the registration covers “film production, production of radio and television programmes, television entertainment”.
The Complainant says that “Spinetv” is a fanciful term, with no meaning in English other than the Complainant's trademark.
The Respondent registered the Domain Name on September 13, 2007. For approximately 9 years prior to that date, the Complainant had been the owner of the Domain Name, but, due to oversight, the Complainant omitted to renew the registration of the Domain Name when it renewed two other domain names it owns, namely and .
The Domain Name points to a website (“the Respondent's website”) which is headed: “Spinemagazine presents: Spine TV!”. It contains click-on links numbered 1 to 3, each with pictures of four or five television sets. The links are respectively labeled “Life Sucks on Monday!”, “Kung Fu Live!”, and “The Idiot Box”.
The Panel visited the Respondent's website on February 28, 2010. The Panel noted that the three click-on links are preceded by the heading: “Welcome to Spine TV To report, entertain and inspire”. Immediately above that, there was a small bee, or wasp, device, over the words: “Spine TV is an unorthodox styles project Contact Spine TV”.
On the left hand side of the screen there were what appeared to be (briefly appearing) trailers for various television shows or videos, and there was a click-on link “HD Box, television shows”, through which it appeared that the site visitor could subscribe to watch various listed television shows. At the foot of the page appeared the words “Articles Catalogue 2008”.
The Complainant asserted in the Complaint that the bee, or wasp, device is the same device it has used, and that the strapline “Spine TV is an unorthodox styles project” has also been copied from the Complainant. But the Complainant did not produce any evidence showing how it has used the device or the strapline. 5. Parties' Contentions A. Complainant
The Complainant contends:
(1) The Domain Name is identical to the Complainant's SPINE TV mark;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant had owned the Domain Name for approximately nine years before the Respondent registered the Domain Name, and the Respondent only acquired the Domain Name when the Complainant overlooked renewing it. The Domain Name has no recognized meaning in the English language other than as a trademark of the Complainant.
(3) The Respondent registered and has used the Domain Name in bad faith. The bad faith is particularly evidenced by the Respondent's copying the Complainant's insect device and strapline on the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of the mark SPINE TV in the United Kingdom, and the Domain Name is identical to that mark. (The generic suffix “.com” is not taken into account in the comparison.) C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Domain Name is identical to the Complainant's mark, and it is evident from the Complaint that the Complainant did not authorize the Respondent to register the Domain Name. (The only reason the Respondent has the Domain Name is that the Complainant forgot to renew it.) The reference on the Respondent's website to “Spine Magazine” is insufficient to suggest that the Respondent (or any business operated by her) might be commonly known by the Domain Name (a possible basis for a right or legitimate interest under paragraph 4(c)(ii) of the Policy), and the Complainant's unchallenged statement that the Respondent has copied the Complainant's insect device and strapline, if true, clearly demanded some explanation from the Respondent.
The subscription facility on the Respondent's website shows that the Respondent has been operating the Respondent's website for commercial gain, so there does not appear to be any possibility that the Respondent might have a right or legitimate interest under paragraph 4(c)(iii) of the Policy (under which a “legitimate noncommercial or fair use… without intent for commercial gain…” can provide the basis for a right or legitimate interest claim.)
The Respondent's online services, which include providing access to television shows, are very similar to the services for which the Complainant's SPINETV mark is registered. For that reason, and because the Complainant had itself been operating a website at the Domain Name for nine years before the Respondent acquired the Domain Name, it is likely that the Respondent knew of the Complainant when she registered the Domain Name. It is difficult in those circumstances to see why the Respondent acquired the Domain Name (a fanciful expression, with no meaning other than as a reference to the Complainant) if the Respondent did not expect (and intend) to attract to the Respondent's website Internet users who were looking for the Complainant's website.
The foregoing combination of circumstances sufficiently establishes a prima facie case of “no right or legitimate interest”, so that the evidentiary burden shifts to the Respondent. The Respondent has not responded to the Complaint, and has accordingly failed to discharge that evidentiary burden. The Complainant's prima facie showing therefore constitutes sufficient proof on this part of the Complaint. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Complainant has also made out this part of its case.
“Spine TV” is not the kind of expression that someone who was unaware of the Complainant might have chosen as a domain name, and in the absence of a Response the Panel can only sensibly conclude that the Respondent was aware of the Complainant and its services when she registered the Domain Name. That conclusion is reinforced when regard is had to the facts that the Respondent appears to be offering a service very similar to that offered by the Complainant, and the Complainant had itself been using the Domain Name prior to its acquisition by the Respondent.
The Respondent must have expected that numerous Internet users who had previously known of the Complainant and its online services would mistakenly arrive at the Respondent's website, believing it to (still) be the Complainant's online place of business. If the Respondent expected that, she must, in creating the Respondent's website, have intended to capture a proportion of those mistaken Internet users who would elect to remain at the Respondent's website and sign up for the Respondent's products. That is a classical example of bad faith registration and use of the kind described at paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's SPINE TV mark as to the source, sponsorship, affiliation and endorsement of the Respondent's website and of the services provided on the Respondent's website.
The foregoing conclusion is reinforced by the Respondent's failure to respond to the Complaint, particularly as it included express allegations that the Respondent had blatantly copied a device and strapline in which the Complainant claims to have proprietary rights.
The Complainant having proved all elements of the Complaint, the Domain Name must be transferred to the Complainant. 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 Domain Name, , be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: March 3, 2010
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