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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Broadcasting Corporation v. Data Art Corporation / Stoneybrook
Case No. D2000-0683
1. The Parties
The complainant is British Broadcasting Corporation of Broadcasting House, Portland Place, London W1A 1AA, United Kingdom. The respondents are Data Art Corporation of 6530 Laurel Canyon Boulevard, Suite 300, North Hollywood, California 91606, United States of America and Stoneybrook of 18 Mopan St, Belize City, Belize.
2. The Domain Names and Registrar
The disputed domain name is bbcnews.com. The registrar at the time the complaint was filed was Network Solutions, Inc. of Herndon, Virginia, United States of America ("NSA"). Next day the registrar changed to Tucows.Com Inc. of Toronto, Ontario, Canada ("Tucows"), which is the current registrar.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on June 26, 2000, and a copy was delivered by the complainant by email that day to the respondent Data Art Corporation’s administrative and billing contact, Mr. John Dow of Stoneybrook, 18 Mopan Street, Belize City, Belize. A copy sent by the complainant by courier on June 26, 2000, to Data Art Corporation’s street address, as registered with NSI, was returned to the complainant due to a "bad address".
The day after the emailed complaint was delivered to Mr Dow and Stoneybrook, i.e. on June 27, 2000, the respondent Data Art Corporation changed the registrar from NSI to Tucows and transferred registration of the disputed domain name to Stoneybrook, whose administrative, technical and billing contact is the same Mr. John Dow.
On June 29, 2000, registration details were sought by the Center from NSI. On June 30, 2000, the complainant informed the Center of the changes that it had discovered in the registration. The Center received the complaint in hardcopy that day.
On July 4, 2000, NSI also informed the Center that on June 27, 2000, the registrar had changed to Tucows. On July 5, 2000, the Center sought from the complainant an amended complaint to accommodate the change in registrar. This was provided. On July 18, 2000, the Center sought registration details from Tucows and these were confirmed by Tucows, stating that the disputed domain name is currently on hold within its system, a procedure designed to ensure that no changes in ownership or registrar occur for the duration of the dispute.
On July 18, 2000, the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and formally notified the respondent Data Art Corporation and, separately, Mr. John Dow and Stoneybrook and all known representatives of Data Art Corporation at all its and their known addresses by post/courier and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, Tucows and ICANN.
The last day for a response was August 7, 2000. No response was received. On August 8, 2000, by post/courier and email, the Center notified Mr. John Dow and Stoneybrook of the default and that an administrative panel would be appointed.
On September 1, 2000, the Center invited Alan L Limbury to serve as panelist. On September 2, 2000, Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On September 5, 2000, the Center transmitted the case file to the panel and notified the parties of the projected decision date of September 19, 2000.
Pursuant to Rule 10(c), on September 20, 2000, in light of the time needed to establish the facts relating to the change of registrant and to determine the procedural issues arising for consideration as a consequence, the panel extended until September 20, 2000, the time for forwarding the decision to the Center.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements (having particular regard to the fact that, as at the date upon which the complaint was filed with the Center, June 26, 2000, the respondent Data Art Corporation was the registrant); the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules and the administrative panel was properly constituted.
4. Factual Background (uncontested facts – incomplete but sufficient for the determination of this complaint)
The Complainant is the registered owner of the "BBC" trademark in various classes in over 53 countries around the world.
The unregistered and distinctive "BBC News" logo is illustrated graphically as:
The mark is extensively used to brand the complainants internationally renowned news gathering, reporting and broadcasting activities. "BBC News" is one of the complainant’s most prestigious and famous marks and is of enormous value.
When the respondent’s web address http://www.bbcnews.com is visited by Internet users, they are re-directed to a variety of web sites including web sites at http://www.firstentertainment.com, (which provides on-line gambling services) and http://www.triviacity.com/prizes.html.
The goods and services offered under the bbcnews.com domain name by Trivia City and by First Entertainment have not been licensed or endorsed by and are not affiliated with the complainant. In fact, British legislation (the Lotteries and Amusements Act 1976) prevents broadcasters in the UK from running gambling or lottery services.
The respondent has not been licensed by the complainant to use the domain name or any web site attached to it.
The following domain names are all registered to the respondent Data Art Corporation according to the NSI "whois" database, as interrogated on May 16, 2000. The trademarks to which the domain names relate are indicated in parentheses.
5. Parties’ Contentions
A. Complainant
The domain name is identical or alternatively confusingly similar to the "BBC" and/or "BBC News" trademarks.
The Respondent has no rights or legitimate interests in respect of the domain name.
The domain name has been registered and is being used in bad faith.
B. Respondent
There was no response to the complaint.
6. Discussion and Findings
Procedural issues
The panel has considered whether the change in registrant of the disputed domain name on June 27, 2000, affects these proceedings.
The NSI Service Agreement binds the respondent to the provisions of the Policy. In particular, under section 8(a) of the Policy, the domain name holder is bound not to transfer the domain name registration to another holder during a pending administrative proceeding.
The question then may be asked whether a proceeding is considered pending following its initiation by the filing of the complaint or only following commencement of the proceeding in the formal sense, as when the service provider, satisfied that the complaint meets all formal requirements of the Policy and Rules, notifies the complaint and the commencement of the administrative proceeding to the respondent.
To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.
However this may be, having regard to the relationship between Data Art Corporation, the registrant of the domain name at the time of filing of the complaint and Stoneybrook, the current registrant, the panel is satisfied that at all times the benefical holder of the domain name has remained the same. The current registrant is Stoneybrook at 18 Mopan St, Belize City, Belize, Mr. John Dow being the administrative, technical, and billing contact for the domain name. The administrative and billing contact at the time of complaint filing was also Mr. John Dow of Stoneybrook, 18 Mopan St, Belize City, Belize. The panel is thus satisfied that Mr. John Dow received the emailed copy of the complaint on June 26, 2000, the date the complaint was submitted to the Center and was instrumental in the change of registrar to Tucows and the transfer of registration to Stoneybrook on June 27, 2000. Stoneybrook, even if it were to claim to have no association with Data Art Corporation, cannot have acquired the domain name registration without knowledge of the complaint. It would be unjust to the complainant to allow such conduct on behalf of the respondent to impede the determination of the complaint.
Accordingly, the panel finds the change in registrant does not affect this proceeding and the panel will determine the complaint on the evidence as a proceeding properly brought by the complainant against the respondent.
The change in registrar does not affect this proceeding. Tucows is holding the disputed domain name pending the outcome of the proceeding and (subject to any court proceedings that may be commenced following this decision under paragraph 4(i) of the Policy) is bound by any direction to cancel or transfer the disputed domain name that this panel might make.
Substantive issues
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The domain name bbcnews.com is virtually identical to the complainant’s famous and distinctive unregistered trademark BBC News, which incorporates the complainants famous registered trademark BBC. Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The panel finds the complainant has established identity.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The respondent has chosen not to respond. The complainant has the onus of proof on all issues.
The disputed domain name has been registered since 1997, decades after the first use by the complainant of the trademark BBC NEWS. It is inconceivable that the respondent was not fully aware of the fame of the marks BBC and BBC NEWS when registering the disputed domain name, especially having regard to the other domain names incorporating slight mis-spellings of other famous trademarks also registered by the respondent as domain names. The respondent does not dispute the complainant’s claim to fame.
The name of the respondent bears no resemblance to and has no reasonable connection with the disputed domain name.
Under these circumstances, the panel finds the complainant to have established that the respondent has no rights or legitimate interests in the disputed domain name.
Bad faith
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).
The panel has found that the respondent must have known of the complainant’s marks BBC and BBC NEWS when it registered the disputed domain name and accordingly the panel finds the domain name was registered in bad faith.
Registration of a domain name corresponding to another’s trademark prevents the trademark owner from reflecting that mark in a corresponding domain name. Registering a domain name for such a purpose shall be evidence of both bad faith registration and use (Policy, paragraph 4(b)(ii)) provided there has been a pattern of such conduct.
Here there is a clear pattern of registering slightly mis-spelled famous trademarks , including in the field of news dissemination. Prior to notice of this dispute no use has been made of any of them other than in connection with sites associated with gambling, an activity unconnected with the dissemination of news. Under these circumstances it is open to the panel to infer that they were all registered for the purpose of preventing the trademark owners from reflecting their marks in corresponding domain names.
Such conduct enables the inference to be drawn more readily that the purpose of the respondent in registering the disputed domain name was to prevent the complainant from reflecting its marks in a corresponding domain name, and that this was also the respondent’s purpose when registering the other domain names that have been mentioned. Similar cases have been held to be classic cases of cybersquatting: Sanrio Company, Ltd and Sanrio, Inc. v. Neric Lau, (Case D2000-0172) and Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113).
The panel draws that inference and finds, pursuant to Policy paragraph 4 (b)(ii) that the complainant has proved that the respondent registered and has used the disputed domain names in bad faith.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name bbcnews.com to be transferred to the complainant.
Alan L. Limbury
Presiding Panelist
Dated: September 20, 2000
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