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British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A. [2004] GENDND 942 (5 July 2004)

1. The Parties

The Complainant is British Sky Broadcasting Group plc, Isleworth, Middlesex, United Kingdom of Great Britain and Northern Ireland, represent by Hogan & Hartson, LLP, Unites States of America.

The Respondents are Mr. Pablo Merino and Sky Services S.A., Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain names <skyargentina.com>, <skychile.com>, <skycolombia.com> and <skymexico.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2004. On February 19, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On February 23, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, on March 11, 2004, the Complainant requested a thirty day suspension of the proceedings. On March 16, 2004, the Center granted the suspension until April 15, 2004. The Complaint filed an amendment to the Complaint on April 15, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondents of the Complaint, and the proceedings commenced on April 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 12, 2004.

The Center appointed Daniel J. Gervais, Clive Duncan Thorne and Rodrigo Velasco Santelices as panelists in this matter on June 16, 2004. 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 Complainant is British Sky Broadcasting Group plc from Isleworth, Middlesex, United Kingdom. The Complainant, its licensees and sublicensees and affiliate companies are well-known for their broadcasting (film, television, radio and satellite television) and print services under the mark “SKY.” British Sky Broadcasting Group plc and its predecessor companies have been using the mark SKY since at least 1984 in the United Kingdom. The mark SKY is registered in a number of jurisdictions, including the United Kingdom, many other European countries, the United States and in many Latin American countries, including the four countries whose names are contained in the disputed domain names, namely Argentina, Chile, Colombia and Mexico.

The Complainant licenses its SKY mark in relation to satellite television services in Latin America through its licensee, New America Incorporated, to at least the following entities: Sky Argentina S.C.A for Argentina, Sky Chile Television Directa al Hogat Ltda. y Compañía en Comandita por Acciones for Chile, Sky Colombia S.A for Colombia and Innova, S. de R.L. de C.V. for Mexico. The Complainant maintains an active presence on the Internet on the following websites: “www.skychile.cl,” “www.sky.com.co” and “www.sky.com.mx.” The websites feature information about the Complainant’s services.

The disputed domain names <skyargentina.com>, <skychile.com>, <skycolombia.com> and <skymexico.com> were registered in November 2001. The domain names were used for different purposes since registration. Firstly, users of the domain names were forwarded to “www.Chilecom Internet Ltda.net.” Then, until the filing of the Complaint with the Center, users of the domain names were automatically redirected to the websites of DirecTV and Metropolis, companies whose services are directly competing with the Complainant’s. On or before February 23, 2004, users of the disputed domain names were redirected to “www.skyairline.cl,” website of the Chilean air carrier Sky Airline.

The Complainant became aware of the registration of the domain names in January 2002. The Complainant’s licensee News America and Sky Chile contacted Mr. Merino, as the representative of Chilecom Internet Lda, the initial Respondent in this proceeding, who initially registered the domain names, requesting that the domain names be transferred to News America. Pursuant to the Complainant’s request, the Registrar initially prevented any transfer of the disputed domain names but then released them a month later. Mr. Merino offered to sell the disputed domain names to the Complainant’s licensee first for the amount of US$1 million, then for the amount of US$2 million, and in November 2003 for approximately US$160,000.

In its response to the Center’s request, the Registrar informed the Center that the Registrant of the domain names was not Chilecom Internet Ltda., as originally provided in the Complaint, rather that it was Sky Services, S.A, a Chilean air carrier. In its amended Complainant, filed on April 15, 2004, the Complainant raised the issues of the identity of the Respondent in these cases. According to the Complainant, the original registrar of the disputed domain names was Pablo Merino, who subsequently transferred the domain names to his company Chilecom Internet Ltda. Chilecom Internet Ltda. was the Respondent in the original Complaint. Chilecom Internet Ltda. responded to the Center by email on February 19, 2004, requesting that the correspondence be made in the Spanish language. According to the correspondence between the Complainant and the Registrar, the domain names were transferred to Sky Services S.A on February 20, 2004.

The Complainant provided an affidavit from Mr. Rebolledo, Executive Counsel of Sky Services, in which he states that Sky Services was unaware that it was the transferee of record of the domain names. He adds Sky Services never authorized the acquisition or any of the activities related to these domain names.

5. Parties’ Contentions

A. Complainant

Based on its correspondence with the Registrar and an affidavit from the Executive counsel of Sky Services S.A., the Complainant alleges that the actual respondent in this case is Pablo Merino and his company Chilecom Internet Ltda. The Complainant further alleges that Mr. Merino fraudulently transferred the domain names in question to Sky Services S.A without their knowledge or authorization. Therefore, the arguments presented by the Complainant in large part are directed against Mr. Merino.

The Complainant alleges that Mr. Merino registered and is using domain names that are identical and confusingly similar to Complainant’s marks. The Respondent used the disputed domains names to direct Internet users to the services of DirecTV and Metropolis, who are competitors of the Complainant.

The Complainant’s marks are well-known and are widely used by the Complainant, its licensees, sublicensees and affiliates in connection with their broadcasting and print services. Mr. Merino could not have been unaware of the Complainant’s rights in the marks, especially because he has been convicted in Chile for pirating the Complainant’s satellite signals. The disputed domain names are identical and confusingly similar to the Complainant’s marks and were registered and used by the Respondent in bad faith.

B. Respondents

Apart from the afore-mentioned affidavit from its Executive Counsel, the Respondents, Mr. Merino and Sky Services S.A, did not reply to the Complainant’s contentions. In the affidavit, Sky Services S.A does not manifest any interest in or otherwise oppose the transfer to the Complainant.

6. Discussion and Findings

A. Identity of the Respondent

The facts can be summarized as follows. Domain names are registered and used in bad faith, then, after a proceeding under the Policy is launched but before the official notification by the Center to the registrar, a purported transfer of the domain names to a third party is registered with the Registrar.

The Panel must discuss the issue of the identity of the Respondent in light of the evidence adduced by the Parties. Based on such evidence, the disputed domain names were registered by Mr. Pablo Merino in November 2001. On or about February 2002, the registrant of the domain names appeared to be Chilecom Internet Ltda, of which Mr. Merino seems to have had control. Mr. Merino remained as the named administrative and technical contact. On February 21, 2004, two days after the Complaint was filed, the information in WhoIs database was changed. Sky Services S.A, the Respondent in the amended Complaint, appeared as the Registrant, Administrative and Billing contacts, while the DNS information still appears to be unchanged as DNS1.CHILECOM.NET, DNS2.CHILECOM.NET and DNS3.CHILECOM.NET.

The Center sent an email to the Registrar on February 19, 2004, informing it that a Complaint had been filed, and at the same time requested the usual information about the registrant and the domain names. The Registrar responded on February 23, 2004, informing the Center that the then current Registrant of record for the domain names was Sky Services S.A. In ex parte correspondence between the Registrar and the Complainant, the Registrar informed that the email from the Center was received by the Registrar on February 23, 2004, and that the domain names were transferred to a new Registrant on February 21, 2004.

This phenomenon of transferring domain names to third parties not involved in the disputes has been labeled as “cyberflight” or “cyberflying” (WIPO, Intellectual Property on the Internet: A Survey of Issues), “http://ecommerce.wipo.int/survey/html/index.html” at para. 361; ccTLD WIPO Best Practices for the Prevention and Resolution of Intellectual Property Disputes, (Version 1: June 20, 2001) at “http://arbiter.wipo.int/domains/cctld/bestpractices/bestpractices.html” and was condemned as a bad practice by a number of administrative panel decisions. (See inter alia ABB Asea Brown Boveri Ltd v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0718, Six Continents Hotels, Inc. v. Interbase, Inc., WIPO Case No. D2002-1045, Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683 and Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056).

Although the nominal Respondent in this case is Sky Services S.A., the initial Respondent was Chilecom Internet Ltda, Mr. Merino’s company. By transferring the disputed domain names after the Complaint has been filed, Mr. Merino and/or Chilecom Internet Ltda is in violation of paragraphs 2 and 8 of the Policy, which forms part of the Registration Agreement. Paragraph 2 of the Policy requires “(a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Paragraph 8 of the Policy prohibits the transfer of the domain name “(i) during a pending administrative proceeding brought pursuant to paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded.” It also gives the Registrar the discretion “to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.”

The Panel is of the view that Mr. Merino cannot escape liability for his behavior. If he could, he would escape his bad faith registration and use by a further violation of paragraphs 2 and 8 of the Policy. Two wrongs don’t make a right.

The purported transfer of the registration to Sky Services S.A. would most likely be considered void by a court of law, since the transferee was unaware of it and did not accept it. Therefore, no contract of transfer was formed and the “gift” of the domain name was not accepted. The Panel will for the purpose of this administrative proceeding treat both Mr. Merino and Sky Services S.A. as Respondents. The Panel notes that as the registrant of record, Sky Services S.A., who did not oppose the Complainant’s contentions, could have voluntarily transferred the registration. But its legal strategy was apparently not to recognize the validity of the transfer and thus this proceeding must proceed.

B. Substance of the Complaint

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B.1);

(2) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B.2); and

(3) The domain name has been registered and is being used in bad faith (see below, section 6.B.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

(1) Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the wording of paragraph 4(a)(i) in regard to trademark or service mark was interpreted by numerous Panels in the past to include both registered marks and common law marks. The Complainant’s submission states that on October 24, 2003, “the trademarks upon which this Complaint is based were assigned (or agreed to be assigned¹) from British Sky Broadcasting Ltd. to British Sky Broadcasting Group plc” and that the evidence as to the ownership of the marks does not reflect those changes. The Panel accepts that the Complainant has sufficient interest in this case, and that it is or will be the owner of the marks at issue.

The record confirms that the Complainant has a registered mark SKY in a number of jurisdictions, that the Complainant, has a registered mark SKYARGENTINA in Argentina; that the Complainant uses the trade name SKYCHILE in Chile, that it operates in Colombia under the business name SKYCOLOMBIA. The Complainant and its licensees, sublicensees and affiliates also have the following common law marks relevant for this dispute SKYCHILE, SKYCOLOMBIA and SKYMEXICO. Therefore, the Panel finds that the Complainant has rights in the marks SKYARGENTINA, SKYCHILE, SKYCOLOMBIA and SKYMEXICO.

As to the second question, the Panel finds that the domain names are identical and confusingly similar to the Complainant’s mark. All of the disputed domain names fully incorporate the Complainant’s mark SKY with a geographical identifier of a particular country (Argentina, Chile, Colombia and Mexico) and the generic top-level domain reference “.com.” The addition of the generic top-level domain (gTLD) reference “.com,” which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the Complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

When a domain name wholly incorporates a complainant’s mark, as is the case with the domain names <skyargentina.com>, <skychile.com> and <skycolombia.com>, that is sufficient to establish confusing similarity for the purpose of the Policy. As a rule, when the domain name fully incorporates a Complainant’s mark and adds a generic word, or a geographical identifier, as is the case with the domain name <skymexico.com>, that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367, CMGI, Inc. v. Reyes, WIPO Case No. D2000-0572). Confusion is only heightened when the generic word added by Respondent is the very location of the Complainant, whose marks and services have been strongly associated with the location. See The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, NAF Case No. FA0205000114354; Am. Online, Inc. v. Asian On-Line This Domain For Sale, NAF Case No. 94636.

(2) Rights or Legitimate Interests

The Complainant submits that the Respondents have no rights or legitimate interests in the domain names based on Complainant’s prior use of the SKY marks. The Respondents, who did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, 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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial 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.

There were no elements introduced in evidence to show that the Respondents are or were commonly known by the domain names. There is no evidence that the Respondents are making a legitimate noncommercial or fair use of the domain names. Quite contrary, the evidence suggests that Mr. Merino used the disputed domain names to divert consumers to the websites of Complainant’s competitors and that such use may tarnish the marks at issue.

Consequently, the Panel finds that the Respondents have no rights or legitimate interests in the domain name.

(3) Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s website or location or of a product.

There is evidence of the situation described in paragraphs 4(b)(i), 4(b)(ii) and the elements of 4(b)(ii). The relevant facts are mentioned below.

Mr. Merino clearly registered the domain name in bad faith. He was convicted in Chile for pirating the Complainant’s satellite signals. Mr. Merino registered the disputed domain names in November 2001, immediately after being released from jail. Mr. Merino could not have been unaware of the Complainant’s marks. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. It is difficult to envisage that Respondents chose to register the disputed domain names by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondents that would not be infringing to the Complainant’s marks.

After being contacted by the Complainant’s representative, Mr. Merino repeatedly offered to sell the disputed domain names for a significant amount (first for the amount of US$1 million, then for the amount of US$2 million, and in November 2003 for approximately US$160,000). Needless to say, these amounts are well above out-of-pocket expenses.

Cyberflying (see section 6.A. above) and providing false contact information for inclusion in the Whois database has also been interpreted as a sign of a bad faith (See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No D2002-0423).

Although Mr. Merino is not a direct competitor of the Complainant (despite his conviction for stealing the Complainant’s satellite signals), he used the disputed domain names to divert Internet users to the website of such a competitor, thus disrupting Complainant’s business.

The Panel finds for the Complainant on this third element of the test.

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 names <skyargentina.com>, <skychile.com>, <skycolombia.com> and <skymexico.com> be transferred to the Complainant.

Daniel J. Gervais
Presiding Panelist

Clive Duncan Thorne
Panelist

Rodrigo Velasco Santelices
Panelist

Dated: July 5, 2004

¹ Which, based on evidence filed, shows that inter partes a contract exists but some of the transfers may not have been recorded with some trademark offices. There are a sufficient number of registered and/or common law marks in the Complainant’s name to proceed under the Policy.