The Complainant is Sky Plc of Isleworth, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Sky UK Limited of Isleworth, United Kingdom and Sky International AG of Zürich, Switzerland internally represented.
The Respondent is Marc Alexander Nieding (the “First Respondent”) of Palma de Mallorca, Spain / IOS SLSCom of Palma de Mallorca, Spain / International Office Solutions Palma SLU of San Mateo, California, United States of America (“United States”) / Super Privacy Service c/o Dynadot of San Mateo, California, United States / International Office Solutions SL.S.com of San Mateo, California, United States represented by BPM Legal, Germany. 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with Dynadot, LLC.
The disputed domain names , , ,
, , , , , , , , ,
, , , ,
, , , , ,
, , , , ,
, , , and
are registered with Mesh Digital Limited (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 24 and 25, 2017, the Registrars transmitted by email to the Center their verification response confirming that the various Respondents are listed as the registrant and providing the contact details. On March 29, 2017, the First Respondent sent several emails regarding ownership of several of the disputed domain names. The Complainant filed amended Complaints on April 10 and 13, 2017.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Response was filed with the Center on May 3, 2017.
The Complainant submitted a Supplemental Filing on May 24, 2017.
On June 12, 2017, the Respondents submitted a Supplemental Filing (“Supplemental Response”) in response to the Complainant’s Supplemental Filing.
The Center appointed Warwick A. Rothnie, Andrew F. Christie and Gabriela Kennedy as panelists in this matter on June 30, 2017. 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 July 13, 2017, the Center notified the parties that the expected due date for the decision had been extended to July 28, 2017 by the Panel. 4. Factual Background
The Complainant is a leading European broadcaster, established in the early 1980s. According to the Complaint, it has some 22 million customers across five main countries (the United Kingdom, Ireland, Germany, Austria and Italy). It has annual revenues of GBP 12 billion, a combined programming budget of GBP 5.2 billion, employs 30,000 people and is listed on the London Stock Exchange.
Until November 2014, the Complainant’s business consisted mainly of its businesses in the United Kingdom and Ireland operated by British Sky Broadcasting plc and the provision of “Sky News” across Europe and through licensees Sky Italia, Sky Deutschland and Sky Radio. In November 2014, the Complainant acquired the business of Sky Italia and Sky Deutschland. Outside Europe, the Complainant also licenses its brand “Sky” in connection with a number of markets.
Amongst other things, it has a number of registered trademarks including;
(a) United Kingdom Trademark No. 2044507B for SKY registered from April 18, 1997, in respect of a wide range of goods and services in International Classes 3, 9, 14, 16, 18, 25, 28, 35, 36, 38, 39, 41 and 42; and
(b) European Union Trade Mark (“EUTM”) No. 00126425 for SKY registered since September 24, 1998, for a range of goods and services in International Classes 9, 16, 38, 41 and 42.
Its first website, “”, was launched in February 1996. Its main website is now “”, which launched in March 2000.
The disputed domain names were registered at various times between 2001 and November 2015. Some of them resolve to active websites, but many are inactive.
Through those of its disputed domain names which are active, the Respondent offers a service by which people outside the United Kingdom can subscribe to the Complainant’s United Kingdom broadcasts. For example, through its service offered via , the Respondent offers people outside the United Kingdom the possibility of acquiring set-top boxes and paying subscription fees to view the Complainant’s United Kingdom programming.
On arriving at the website, the browser is confronted with a notice which includes the disclaimer that “SkyN is not authorised by S, S or S and not affiliated with any of them.”
The Respondent states that it has been providing the service from since 2006. Subsequently, the Respondent introduced a service targeted at yachts and other seafaring travelers through the disputed domain name .
In 2006 and 2007, the Complainant’s predecessor “Premiere Fernsehen GmbH & Co. KG” brought proceedings against one of the First Respondent’s earlier companies, apparently called “German Sky Service GmbH & Co. KG”, in Germany under that country’s unfair competition laws in relation to two other domain names that the Respondent was using at that time. That dispute was resolved ultimately with the transfer to the Complainant of the domain names in question. The circumstances around that dispute will be considered in more detail below in relation to the question of rights and legitimate interests under the Policy. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant’s requests to consolidate its complaints against all the disputed domain names under one complaint and to file a supplemental filing. A. Consolidation of complaints
The Complainant has requested consolidation of its complaints as the disputed domain names have been registered in the names of a number of different entities.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
In the present case, each of the disputed domain names is formed around the word “Sky” and those which resolve to an active website seek to offer for sale the use of the Complainant’s services. In addition, in the Response, the First Respondent has claimed that he controls the use of all of the disputed domain names either directly as the registrant or as the person effectively in control of the entity in whose name the disputed domain names are registered. In these circumstances, it appears to the Panel to be fair and equitable to all parties, and an efficient use of resources, to consolidate all of the disputed domain names in the one Complaint.
For ease of reference, the Panel will refer just to the “Respondent” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names. B. Admissibility of Complainant’s Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
In its proposed Supplemental Response, the Respondent objects to the admissibility of the Complainant’s Supplemental Filing.
While the Panel does have considerable reservations that a number of matters which the proposed Supplemental Filing seeks to address could and should have been addressed in the Complaint, on balance the Panel considers that it is appropriate to admit the proposed Supplemental Filing into the record. First, the Panel notes that the litigation in Germany between the “parties” involved an entity with a different name to any of the present Respondents. Secondly, for the reasons discussed more fully below, the presence or absence of a disclaimer on the Respondent’s active websites is not in the end determinative. Thirdly, it is apparent from the proposed Supplemental Filing that the characterization which the Respondent seeks to give to some events is itself not necessarily complete. Fourthly, while the Respondent has objected to the admissibility of the proposed Supplemental Filing, the Respondent has not pointed to any particular prejudice which would flow from admission. Moreover, the proposed Supplemental Response addresses the substance of the further allegations made in the Complainant’s Supplemental Filing. Accordingly, the Panel admits the Complainant’s Supplemental Filing into the record. In the interests of ensuring that both parties are given a fair opportunity to present their respective cases, the Panel also admits the Supplemental Response into the record. C. Identical or Confusingly Similar
The Complainant has proven its ownership of at least the two registered trademarks referred to in Section 4 above. It is not in dispute between the parties that the underlying trademark, SKY, is very well-known.
The Respondent has also accepted that the disputed domain names are confusingly similar to the Complainant’s trademark. In the Panel’s view, that is plainly correct.
Accordingly, the Complainant has established the first requirement under the Policy. D. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the Respondent. Accordingly, it is usually sufficient for the Complainant to raise a prima facie case against the Respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorized the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it. The Complainant also contends that the Respondent is not commonly known by the disputed domain names and is not using them in connection with a good faith offering of goods or services.
The Respondent does not dispute that it is not explicitly authorized by the Complainant or affiliated with it. Instead, it says it is a legitimate reseller of the Complainant’s products and seeks to bring itself within the principles outlined in the so-called “Oki Data test”: see WIPO Overview 3.0 at paragraph 2.8.1. It also points to its long usage of, in particular, the disputed domain name, by which it says it is commonly known, and the Complainant’s long delay in taking action against the Respondent. In addition to its claim to be a legitimate reseller, therefore, the Respondent says this dispute is barred by the Complainant’s delay and falls well out of the scope of the Policy.
In addressing the parties’ submissions, the Panel considers that the disputed domain names fall into two different groups: those disputed domain names which resolve to active websites (which is offering to resell the Complainant’s products) and those which are inactive. The Panel deals with the active websites first.
The first point is that any purchase by the Complainant’s subscribers of the services being offered by the Respondent is in clear breach of the subscribers’ contracts with the Complainant. Under the subscriber agreement, a subscriber is permitted to use the Complainant’s service only to view the Complainant’s United Kingdom programming in the United Kingdom. The Respondent acknowledges this is the case. Moreover, the Respondent actively strives to educate its customers not to contact the Complainant directly as its experience is that customers (seeking to access the Complainant’s United Kingdom programming outside the United Kingdom) who do contact the Complainant have their contracts cancelled.
In its Supplemental Filing, the Respondent disputes that it is clear its customers are, or would be, in breach of their subscriber agreements with the Complainant. The Respondent also puts in dispute how many of its customers have been terminated by the Complainant since 1997. At paragraph 35 of the Response, however, the Respondent stated:
“…business. As already mentioned above, the Respondent’s services enable the Complainant‘s customers to view the Complainant’s television program outside the UK, which is contrary to the Complainant’s conditions of use. If a customer contacts the Complainant directly, there is a high risk that the customer’s contract is cancelled. The Respondent tries to avoid this consequence by educating its customers not to contact the Complainant directly.” (emphasis supplied)
Despite the position taken in the Supplemental Filing, therefore, it is clear that the Respondent knows and accepts that its customers will be acting in breach of their subscriber agreements with the Complainant.
In the Panel’s view, a service which induces the subscribers to act in breach of their contracts with the Complainant does not qualify as a good faith offering of goods or services under the Policy. The Respondent’s attempt to analogize its conduct to an unauthorised reseller which is found to have rights or a legitimate interest under the “Oki-Data” test is inapt. In such cases, the reseller typically buys the goods on the open market, free of any contractual restraints, and is not acting in breach of any contractual obligation otherwise binding on them. Here, the Respondent openly admits its whole business model is to induce the subscribers to the Complainant’s United Kingdom programming services to breach their contracts and potentially infringe territorial copyright restrictions. Moreover, the Respondent knows the Complainant does not agree with this course as the Respondent actively seeks to educate its customers not to contact the Complainant directly as, if they do, their contracts will be cancelled.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the “active” disputed domain names.
With regard to the delay in the Complainant bringing this Complaint, the Panel does not believe that this should prevent a finding in favour of the Complainant in relation to the second requirement under the Policy, based on the analysis below.
As mentioned above, in 2006, the Complainant brought proceedings in Germany against a company associated with the First Respondent in respect of the use of the domain names, and (the German domain names). On appeal to the Hanseatic Higher Regional Court in Hamburg, the proceedings were resolved when the First Respondent’s company undertook to the Court to refrain from:
“…transmitting, offering and/or advertising subscriptions and program content of the British pay-TV provider “BSkyB” to consumers residing in Germany, if this is done as in the advertising of Respondent’s Internet website according to Exhibit Ast 1 through 6 and/or in the order form dialogue, Exhibit Ast 16.”
In addition, the First Respondent’s counsel confirmed to the Court that:
“This declaration of commitment refers to Respondent’s advertising Internet presence that is also intended for Germany, and in addition, refers to interested parties for whom it is recognizable for us that they wish to receive the program of “BSkyB” in Germany”.
The proceedings were not for trademark infringement, but for unfair competition. Later in 2007, however, a further dispute between the parties arose in which the Complainant asserted that the two domain names subject of the German court case infringed the Complainant’s trademarks. That dispute was resolved by the Respondent, through its then lawyers, undertaking to transfer the domain names to the Complainant. That in due course happened. By itself, the Complainant’s unexplained failure to take up that offer could be a basis for finding that the Complainant had acquiesced in the Respondent’s use of the disputed domain name.
In the same letter that the Respondent’s then lawyers offered to transfer the two German domain names, they also pointed out that letters of demand had been received in relation to the disputed domain name, , and offered to transfer it too in settlement of that dispute.
Neither party has provided an explanation why that offer was not carried out, while the two German domain names were transferred.
The Respondent points to three other acts of the Complainant which the Respondent contends confirm its rights or interest in the disputed domain names.
First, on July 14, 2009, the Respondent sent an email to the Complainant outlining the Respondent’s business model and seeking a meeting to explore the possibility of the two businesses working together to provide an improved service to offshore customers. In its Supplemental Filing, the Respondent says that this email was sent in response to a request from one of the Complainant’s employees for the Respondent to provide assistance with servicing one of the Complainant’s subscribers from outside the United Kingdom. The email certainly indicates that people within the Complainant had some knowledge of the Respondent’s activities. Despite the complexion the Respondent now wishes to give the exchange, however, the email makes clear on its face, that the Respondent had considerable uncertainty about the acceptability of the proposal. First, it noted that only recently it had shut down its service under the German domain names in accordance with the parties’ agreement on July 1, 2009. Secondly, the Respondent’s email expressly asks the Complainant “to check internally if a cooperation is possible at all?”
So far as the record in this proceeding shows, there was no response to the Respondent’s email.
Secondly, the Respondent refers to an email contact from the Complainant on September 7, 2011, which the Respondent characterizes as the Complainant seeking assistance in the supply of its services to offshore customers. The text of the email in question reads as follows:
“Please can you contact me on the above details to discuss supplying ‘sky tv’ to your offshore clients through official sky channels.”
The Panel is not willing to find that that email constitutes an endorsement or acceptance of the legitimacy of the Respondent’s business model. It is quite equivocal about whether the Complainant accepted or acquiesced in the Respondent’s conduct. Moreover, it was followed by cease-and-desist letters from the Complainant’s lawyers on December 22, 2011, and again on February 8, 2012.
Thirdly, the Respondent claims that the Complainant has actively encouraged at least one customer to sign up to the Complainant’s service through the Respondent when the customer moved from the United Kingdom to Sweden. In support of this claim, the Respondent has provided an email from the customer which, amongst other things, does state that he was recommended to the Respondent by the Complainant’s service staff. The Complainant has provided what it says is a transcript of the customer call in question. Relevantly for present purposes, it sets out:
“Complainant rep: I’m just sending the website over to my manager now because it could be a hoax or could be like a scam or something and you like fill in the credit card details and stuff like that and it turns out that they are just going to con you and take your money off you so I don’t know because as they haven’t heard of such a thing. So I’m just going to …
Customer: Sky Europe TV satellite television
Complainant rep.: Yes I’m on the website now Sky Europe TV and it just doesn’t look legit – Like just from first glance you can see it’s got this like this weird thing in the middle and looks a bit dodgy. I’ll just go and ask my manager and see what he says, see what he thinks about it.
Customer: OK.
Complainant rep.: I just spoke to my manager they don’t know what kind of … as though [sic] it says Sky it’s still nothing to do with the UK service although it says Sky, so .. yes
Customer: So basically I need to cancel my subscription with you? Stuart: Yes 100% you need to cancel it. If you are moving to Sweden forever then yes.”
Notwithstanding the customer’s claim to the Respondent, the Panel does not think this exchange can be held to constitute the Complainant encouraging the customer to access the Complainant’s service through the Respondent.
The Panel is troubled by the long delay before the Complainant took action against the Respondent. Against that, however, laches or delay are not usually disentitling under the Policy. As set out above, the Complainant does not appear to have explicitly induced the Respondent to carry on his business. On the contrary, it has objected at various points. Moreover, it is clear that the Respondent well knows that its customers are acting in breach of their subscriber contracts with the Complainant and, most importantly, that the Complainant does not accept customers accessing its United Kingdom programming from outside the United Kingdom. The Respondent for example is actively educating its customers not to contact the Complainant because of the risk that their service will be cancelled.
In these circumstances, the Panel finds that the length of time in the Complainant bringing the Complaint does not confer on the Respondent rights or legitimate interests in the “active” disputed domain names.
Accordingly, the Panel finds that the Complainant has made out the second requirement under the Policy in respect of those disputed domain names.
The Respondent can be in no better position in respect of the disputed domain names that do not resolve to an active website. There is no offering of goods or services in good faith. No explanation has been offered about obstacles to commencement of use of those disputed domain names. Furthermore, the nature of the Respondent’s business makes it plain that any such use would not be in good faith for the reasons discussed in relation to the “active” disputed domain names.
Accordingly, the Complainant has established the second requirement under the Policy. E. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is clear both from the chronology of events and the Respondent’s business model that the Respondent was very aware of the Complainant’s trademarks when the Respondent registered the disputed domain names.
In addition, the Respondent concedes that the disputed domain names were registered in bad faith.
The Respondent relies on the nature of its service and the matters set out in Section 5D above to support a finding that its use is not in bad faith. That use, however, involves the Respondent in inducing subscribers to breach their contracts with the Complainant. In circumstances where the Panel has found on the record in this proceeding that the Respondent does not have a right or legitimate interests in the disputed domain names, therefore, the “active” disputed domain names are not being used in good faith. Further, the Panel finds that the stockpiling of the “inactive” disputed domain names in the circumstances of this case and having regard to the Respondent’s overall conduct also constitutes use in bad faith under the Policy as it is clear the Respondent would only use the “inactive” disputed domain names, if at all, in the same way as the Respondent is using the “active” disputed domain names.
Accordingly, the Panel also finds that the Complainant has established that the Respondent is using the disputed domain names in bad faith. F. Reverse Domain Name Hijacking and Scope of the Policy
In the circumstances, the Respondent’s claim for a finding of reverse domain name hijacking against the Complainant is moot.
The Respondent has also contended that the dispute with the Complainant falls outside the scope of the Policy. It is true that the Policy is intended to provide an efficient and economical means to deal with “clear” cases of cybersquatting and is not designed to deal with complicated trademark disputes. As set out above, the delay in the Complainant bringing this proceeding against the background of dealings with the Respondent set out above has been a matter of considerable concern to the Panel. There are many cases, however, where trademark owners have successfully brought complaints against resellers under the Policy or where questions of delay and acquiescence have needed to be addressed. Ultimately, the Panel considers that the Policy is not only applicable to the dispute in the present case but also, for the reasons set out above, should be applied to find that the Complainant is entitled to the relief claimed. 6. Decision
For 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.
Warwick A. Rothnie
Presiding Panelist
Andrew F. Christie
Panelist
Gabriela Kennedy
Panelist
Date: August 10, 2017
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