The Complainants are Sky International AG of Zurich, Switzerland, and Sky Plc of Middlesex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by NSN Law Firm, Turkey.
The Respondent is Tornike Tvauri of Tbilisi, Georgia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2018. On September 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center on September 20, 2018, that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 24, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent submitted an email communication on October 2, 2018, and its Response on October 12, 2018.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 30, 2018. 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. 4. Factual Background
The Complainants Sky Plc and Sky International AG that are part of the group of companies affiliated to SKY Group Companies. SKY Group Companies is one of the Europe’s leading entertainment group, with over 21 million customers.
The Complainants are providing broadcasting services under their SKY brand and SKY generated brands and own several trademark registrations for SKY including the following:
- Turkish Trademark Registration No. 2012/86399 for the trademark SKY registered October 12, 2012, in classes 9, 38 and 41;
- Turkish Trademark Registration No. 2012/86402 for the trademark SKY registered October 12, 2012, in classes 9, 38 and 41.
The disputed domain name was registered on November 1, 2016, in the name of the Respondent who is a physical person domiciled in Georgia.
The disputed domain name resolves to a website providing news and opinion on sports-related topics in Turkish. 5. Parties’ Contentions A. Complainant
The Complainants assert that the disputed domain name is confusingly similar to the Complainants’ trademark SKY and that the addition of the descriptive word “skor” (which means “score” in Turkish and is a sports term) reinforces the association between the disputed domain name and the Complainants’ trademark.
The Complainants consider that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainants have neither licensed nor otherwise authorized the Respondent to use their marks or to apply for or use any domain name incorporating the trademark SKY.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainants observe that the Respondent is well aware of the Complainants’ trademark considering that the Respondent is using a logo very similar to the Complainants’ logo and that the Respondent’s website clearly suggests that the website belongs to the Complainants or is an official affiliated dealer endorsed by the Complainants.
The fact that the website does not provide any information on the true identity of the domain name’s registrant provider clearly shows that the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainants or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website. B. Respondent
The Respondent contends that:
- It holds a trademark registration for SKYSKOR in Turkey (with a registration number 201759277);
- The associated website “www.” is available in Turkish and broadcasts sports news with Turkish celebrities;
- The Complainants do not offer services in Turkey and in the Turkish language;
- The disputed domain name was registered in November 2016;
- The Respondent and the Complainant are not competitors.
- “Sky” does not refer to a media corporation but to a region of atmosphere, and was used in to pertain to Turkish people across the world. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainants furnished evidence that the marks SKY and SKYSPORT are registered before the Turkish Patent and Trademark Office since 2012 as indicated above. The Complainants also claim that the SKY trademark is well-known in the broadcasting services by putting forward their total revenues, number of employees, number of customers and evidence of the fact that the SKY Group Companies is listed on the London Stock Exchange.
Consequently, the Panel finds that the Complainants have succeeded in proving their rights in the SKY trademark and also that the trademark can be considered well-known for broadcasting services throughout Europe.
The disputed domain name integrates the Complainant’s SKY trademark in its entirety, as it differs from the registered SKY trademark only by the additional word element “skor”.
The addition of the word element “skor” (which means “Score” in Turkish) does not prevent a finding of confusing similarity between the disputed domain name and the Complainants’ trademark and indicates a suggested relationship between disputed domain name and the Complainants’ trademark due to the other SKY trademarks such as SKY+, SKY NEWS, SKY SPORTS etc. As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ SKY trademarks.
The Complainants have satisfied this Policy requirement. B. Rights or Legitimate Interests
The Complainants have alleged that the Respondent has not indicated any sort of legitimate reason for having registered the disputed domain name and has not provided any plausible bona fide reason for having it registered.
The Complainants have made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests in the disputed domain name, according to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) paragraph 4(a)(ii) of the Policy.
The Respondent replied to the Complainants’ contentions by submitting evidence of a Turkish trademark registration for SKYSKOR for the goods in class 28 including toys and sports equipment registered in the name of third party. The Respondent failed to explain the relationship between the owner of the Turkish trademark registration and himself. Moreover, the SKYSKOR trademark postdates the Complainant’s trademark and the creation of the disputed domain name (see section 2.12.2 of the WIPO Overview 3.0, the existence of a respondent trademark does not automatically confer rights or legitimate interests in the domain name.
Moreover, it appears from the content of the website that the Respondent is not making a legitimate noncommercial or fair use; on the contrary, it appears that he is diverting consumers in a misleading way for his own commercial gain.
The Complainants, having made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which remains unrebutted, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants’ trademark SKY is a well-known mark throughout Europe and achieved to well-known trademark status prior to the registration by the Respondent of the disputed domain name in 2016. The Panel is of the view that at the time the Respondent registered the disputed domain name, the Respondent is more than likely to have been well aware of the SKY trademarks and more specifically of the official “sky sports” website.
The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
Furthermore, according to the website "www." of the Respondent, the main field of activity of the Respondent is the provision of online daily sports news broadcasting services which are the core business of the Complainants.
The use of the SKYSKOR logo as to the combination of color and positioning of SKY and SKOR elements on the Respondent website “www.” are strikingly similar to the Complainants’ SKY SPORTS trademark and logo. Moreover, the Respondent uses SKYSKOR indication in its website “www.”.
In view of all the above, the Panel finds that the Respondent had actual notice of the Complainants’ trademark rights at the time of registration of the disputed domain name.
For the above mentioned reasons, the Panel finds that the Respondent's explanations indicated above as to the legitimate choice of the disputed domain name are far from being satisfactory.
Considering that the disputed domain name is confusingly similar with the Complainants’ trademark, the Panel finds that the disputed domain name is used to divert Internet users seeking the Complainants’ website to the Respondent's website.
The above-mentioned use of the Complainants’ well-known trademark in the disputed domain name for an intentional attempt to attract for commercial gain Internet users by creating a likelihood of confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website, amounts to evidence of bad faith registration and use as per paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has established the requirements of paragraph 4(a)(iii) of the Policy. 7. 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 name be transferred to the Complainant Sky International AG.
Emre Kerim Yardimci
Sole Panelist
Date: November 20, 2018
1 The trademark registration indicates as a trademark owner Mossack Fonseca & Co Ltd, from Tortola.
Full & Egal Universal Law Academy