WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Portland Titles Limited v. Martin Baker
Case No. DTV 2000-0003
1. The Parties
Complainant:
Portland Titles Limited, 14, Selsdon Way, London E14 9GL
Respondent:
Martin Baker, Regional Servicecards Limited, 1st Floor Office, 223 Bispham Road, Blackpool, Lancashire FY2 0MG
2. The Domain Name(s) and Registrar(s)
Domain Names:
and
Registrar:
dotTV
3. Procedural History
The Complaint was received by WIPO by email on October 13, 2000 and in hard copy on October 16, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules paragraph 2(a) and the Respondent responded to the Complaint within time by email on November 9, 2000. The Panel is properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel�s Decision is November 29, 2000.
4. Factual Background
The Complainant is the proprietor of a number of trademark registrations in European countries (including the UK) for a device mark comprising a square, a circle within the square, the letter "X" within the circle, "TELEVISION X" superimposed over the "X" and the words "The Fantasy Channel" beneath the circle and within the square ("the Device Mark"). The registrations are for media-related services. The registrations date back to 1996-1998. Most of them are in the name of Richard Desmond who is said by the Complainant to be a director of Portland Investments Limited, who held the marks on trust for the Complainant, a wholly owned subsidiary of Portland Investments Limited. The Complainant has produced evidence from the UK TradeMarks Registry to show that the UK registrations were assigned to the Complainant on or before September 25, 2000.
Since 1995 the Complainant (through Richard Desmond and/or its/his licensees) has made extensive use of the Device Mark in relation to an adult-orientated television service and since July 1999 in relation to a related magazine.
On June 27, 2000 the Respondent registered the domain name �� and on June 28, 2000 he registered the domain name ��. The two domain names are together hereinafter referred to as "the Domain Names".
On September 24, 2000, Mr. Maninder Gill of the Complainant telephoned the Respondent and asked him if he would be prepared to sell the domain name �tel � to the Complainant. It seems that he declined to do so, because the following day Mr. Matthew Bugden of Nasnet Online Limited, an associated company of the Complainant, wrote to the Respondent referring to that telephone conversation, notifying the Respondent of the Complainant�s interest in the name and offering the Respondent the sum of �200 for the domain name. The Respondent exhibited the letter. The Complainant did not mention it.
Shortly thereafter, according to the Respondent (the Complaint makes no mention of any of this), the Respondent tried to contact Mr. Bugden, but was unable to do so and left a message on his answer phone to the effect that the domain name was not for sale. He then telephoned Mr. Gill and gave him the same message. The Respondent says Mr. Gill encouraged him to name a price and the Respondent said that it would have to be in excess of �10,000 for him to even consider selling it. Mr. Gill told the Respondent that they had now discovered that the Respondent had also registered the domain name �� and asked the Respondent if he would accept �10,000 for both names. The Respondent asked Mr. Gill if this was an offer and Mr. Gill said that he would have to check with Mr. Bugden.
On September 29, 2000 Mr. Bugden wrote to the Respondent referring to the �10,000 "offer" and said that he and his colleagues were considering it.
This complaint was launched on October 13, 2000.
5. Parties� Contentions
A. Complainant
The Complainant contends as follows:
The Domain Names are clearly confusingly similar to and potentially infringe the trademark rights of the Complainant and the Respondent has sought to take unfair advantage of the Complainant�s trademark "Television X: The Fantasy Channel", by registering the Domain Names, as the Domain Names are not in any way related to each other, except as used by the Complainant, the legal owner of the relevant trademark. The Respondent has merely split the Complainant�s trademark into two parts and registered the Domain Names.
The Complainant (or where relevant, Richard Desmond) has at all material times licensed the trademark to an associated company, Portland Enterprises Limited, which (until 14th August 2000) broadcast an adult-oriented television service known as "Television X � The Fantasy Channel". Since 14th August 2000, as a result of a reorganization of the Portland group of companies, the Channel has been broadcast by Portland Enterprises (CI) Limited, which has also been licensed the trademark by the Complainant.
The Channel was launched in June 1995, and is currently available on all the major broadcasting platforms in the United Kingdom. The Channel currently enjoys the largest subscription base in the extremely competitive adult broadcasting sector.
Only recently, the Channel was voted the premier adult station in What Satellite TV�s magazine�s annual awards. Over �4 million have been invested to date in establishing, through advertising and promotion, the reputation and goodwill of the Complainant�s trademark. In addition, approximately �34 million has been invested in the Channel itself.
In addition, Fantasy Publications Limited (an associated company of the Complainant) has since July 1999 published a magazine version of the Channel.
By virtue of the extensive use and promotion of the Channel, the trademark has become distinctive of the Channel�s products and the Channel�s reputation extends across the entire Media Industry worldwide. This is clearly evidenced by the fact that the Channel has registered trademarks in several different countries as indicated above.
The Domain Names as registered by the Respondent are an attempt by him to usurp the Complainant�s ability to exploit the goodwill in their name and trademark by registering domain names likely to be used by the Complainant in connection with the Channels. It appears to the Complainant that the registration by the Respondent of both Domain Names is a calculated attempt to infringe the Complainant�s trademark rights and/or lure for financial gain Internet users to the Respondent�s web site, by creating a likelihood of confusion with the Complainant�s mark as to the source of the Respondent�s web site.
To register both Domain Names which conveniently for the Respondent form the whole of the Complainant�s trademark cannot be a coincidence and only serves to compound the evidence of bad faith on the Respondent�s part.
The Respondent has made clear to the Complainant that the Complainant would only be able to purchase the Domain Names for the sum of �10,000, an offer which the Complainant rejected as it should not be the Respondent�s right to sell domain names which the Complainant clearly has a legitimate right to own, and the Respondent clearly has no legitimate interest in owning. Additionally, the Respondent�s attempt to sell the Domain Names for �10,000 to the Complainant clearly evidences his intention of registering the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of his out-of-pocket expenses directly related to the Domain Names. The Complainant notes that at October 2, 2000 the domain names of a similar nature, and
could each be registered for $50 per year.
The Respondent has not set up any web site exploiting the Domain Names, nor does the Complainant believe that the Respondent can legitimately do so without further infringing the rights of the Complainant.
B. Respondent
The Respondent contends as follows:
The Respondent objects to the Complainant�s withholding of certain of the details of the inter partes communications so as to give the Panel the false impression that it was the Respondent who made the first approach. He asserts that he did not register the Domain Names with a view to selling them. It was the Complainant who made the first approach and even then the Respondent declined to sell the first name that was discussed, namely ��. It was only after he had been pressed by the Complainant that he named a price.
The Respondent claims that the registration of the Domain Names on consecutive days was entirely coincidental. He did not have the Complainant or its media-related services in mind at the time.
The Respondent says that in relation to �� he has spent considerable time and effort putting together plans to launch a website in the USA next year for an internet television extras agency. He points out that this cannot infringe any of the Complainant�s trademark registrations because the Complainant does not have a relevant registration in the USA; further, �televisionx� is not itself a trademark, simply an element of the Device Mark. To support this the Respondent exhibits 2 pages of artwork for pages of his website.
In relation to �� the Respondent says that he registered this on behalf of a friend, having discussed with his friend his plans for ��. He says that his friend had been unaware of the �.tv� domain and the following day asked him to register ��. The Respondent asserts that he (the Respondent) does not watch adult TV stations and was completely unaware of the association between the Domain Names until he was informed of it by the Complainant. The Respondent says that �� is registered in his name because it was registered using his credit card. He says that he personally has no intention of using it. He says that he has been reimbursed by his friend and if this domain name is transferred to the Complainant, it will put him in a difficult legal position with his friend.
The Respondent asks that the Domain Names remain registered to him.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that;
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
The Domain Names are each identical to different elements of the Device Mark. Those elements are the two most prominent elements of the Device Mark.
The Panel finds that each of the Domain Names is confusingly similar to a trademark or service mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Names involves proving a negative. Proving a negative is notoriously difficult and it is no doubt for this reason (at any rate in part) that by virtue of paragraph 4(c) of the Policy the burden of proof is to a certain extent shifted onto the shoulders of the Respondent. That sub paragraph sets out certain circumstances which, if found by the Panel to be proved, will demonstrate the Respondent�s rights or legitimate interests to the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
The circumstances set out in that sub paragraph are:
Before any notice to the Respondent of the dispute, the Respondent�s use, 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
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
The Respondent is making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The registration of the two most prominent elements of the Complainant�s trade/service mark by the same person, a person with no obvious connection with the television industry, and on consecutive days is sufficient to give the Respondent a case to answer.
For �� the Respondent claims to have made demonstrable preparations to use that domain name in connection with a bona fide offering of services, namely the exhibited artwork for a television extras agency in the USA, which he intends to launch next year. He says that he has "spent considerable time and effort putting together details for my new website�.". The artwork is rudimentary and undated. It could easily have been created ex post facto for the purposes of answering this complaint. If the Respondent had genuinely spent considerable time and effort on the project (e.g. sought advice on the viability/ implications of doing business in the USA) he could readily have produced something more convincing.
As to �� the Respondent makes no claims to any rights or legitimate interest in the domain name. He says he registered it for a friend and exhibits a letter from the friend, Ralph Butters. The letter simply confirms that the domain name was registered for him. It contains no material from which the Panel can conclude that Mr. Butters has any rights or legitimate interest in respect of the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Bad Faith
While the Panel accepts that the first approach in the "negotiations" was made by the Complainant, the Panel cannot accept the Respondent�s explanation for the alleged coincidence. The Panel does not believe that it was a coincidence. Had it been a coincidence, the Respondent would have been able to provide much better evidence to demonstrate his and Mr. Butters� rights to the Domain Names.
The Panel finds that the Respondent has given to the Panel a less than frank explanation for his registration of the Domain Names. Why would he do that? Presumably, to conceal from the Panel his true motives. The Panel concludes that the Respondent registered the Domain Names either in the hope that it would provoke an offer from the Complainant to purchase the Domain Names at a price in excess of his out-of-pocket expenses (see paragraph 4(b)(i) of the Policy) or to attract to his proposed website for commercial gain persons intending to reach the Complainant or its services (see paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds that the Respondent registered the Domain Names in bad faith and is using them in bad faith.
The Conduct of the Complainant
The Respondent is justifiably aggrieved at the Complainant�s �selection� of the early inter partes correspondence, which gives the erroneous impression that it was the Respondent who made the first approach to the Complainant.
While, as is apparent from the decision, the fact that the Complainant made the first approach was not regarded as fatal to the Complaint, presumably the Complainant thought that the omission of the details in relation to that early approach would improve the Complainant�s position. The Panel rejects the possibility that it might have been an oversight. The events are too recent to have been forgotten.
It is crucial to the success of this process that complainants are open and frank with the Panel. The process has a very narrow focus, namely bad faith registration and use of domain names. A less than straightforward presentation of the facts on the part of complainants is wholly out of place. The point is of significance because respondents do not always respond to complaints and in those circumstances a panelist has no alternative but to decide the case on the record as presented by the complainant, without the benefit of the respondent�s views.
The Panel has thought long and hard how to register its displeasure. To leave the Domain Names in the hands of the Respondent would not be right, the use of the Domain Names by anyone other than the Complainant being likely to lead to confusion and the Panel having found that the Respondent has himself sought to deceive the Panel. Regrettably, the Panel appears to have no sanction available to it in these circumstances, save to declare that the Complainant�s lack of candour in formulating the Complaint, while not an instance of reverse domain name hijacking, was nonetheless an abuse of the administrative procedure.
7. Decision
In light of the foregoing, the Panel having found that the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the Domain Names and the Respondent registered the Domain Names in bad faith and is using them in bad faith, the Complaint succeeds.
The Panel directs that the Domain Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: November 20, 2000
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